Patent Trial & Appeal Board

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New Pilot Will Not Accelerate Post-Grant Matters

Last week the United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The program, entitled “Fast-Track Appeals Pilot Program” launched July 2, 2020. (here)

But, the program may not benefit all appellants.  And it is important to understand that the program is not offering an appeal timeline (start to finish) that spans 6 months.
Continue Reading PTAB Fast-Track…Not So Fast

Federal Government Seeks Cert on Appointments Clause & Forfeiture Issues

On June 25th, the federal government filed a petition (here) for certiorari asking the Supreme Court to review the CAFC’s decisions in both Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019) and Polaris Innovations Ltd. v. Kingston Tech. Co., Inc., No. 2018-1831 (Fed. Cir. Jan. 31, 2020).  This petition comes as no surprise after the CAFC’s fractured denial of an en banc Arthrex rehearing.

The Court has had occasion to consider Appointments Clause issues several times in recent years, most notably in Lucia v. SEC (2018), and again touching upon the issue last week in Seila Law LLC v. CFPB. 

Is there a SCOTUS appetite for the gov’t’s issues?
Continue Reading PTAB Appointments Clause Debate: SCOTUS Preview

House and Senate Judiciary Committees Alerted to “Significant and Rapidly Growing Problem”

Earlier this month, a coalition of stakeholder organizations sent letters to the House and Senate Judiciary Committees seeking an investigation into the Patent Trial & Appeal Board’s (PTAB) application of discretion under 35 U.S.C. § 314(a).  More particularly, the organizations argue that the Board’s application of NHK Spring is “choking off access” to the PTAB and leading to a resurgence in patent litigation of questionable merit. The organizations ask that the USPTO report to Congress on these practices, and engage in formal rulemaking to guide agency practices.

Whether the requested action is provided or not, the continued application of 314(a) in the NHK context seems destined to end.
Continue Reading Congress Urged to Investigate PTAB Discretionary Denials

Board Acknowledges Slipping WDTX Trial Date

Some weeks back I highlighted the institution decision in Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393), which held that despite most General Plastic Factors favoring institution, the majority felt as though a looming WDTX trial date trumped all other GP factors and denied institution.  After petitioner’s unsuccessful request for a Precedential Opinion Panel (POP) hearing, the Board ordered additional briefing.

Today, the Board reversed course instituting the Sand Revolution IPR.  In the process, the Board provided some insight into slipping WDTX trial dates and steps petitioners can take to help avoid discretionary denials of parallel AIA trial petitions.
Continue Reading PTAB Reverses Discretionary Denial Based on WDTX Trial

NPRM to Codify Existing Practices with Notable Exception

The United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking today to update its rules to conform to SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).  That is, the rules now follow the holding of SAS to institute an AIA trial proceeding on all challenged claims should the petitioner meet its burden for at least one challenged claim.  Additional include other rule based updates to codify practices introduced by changes to the Trial Practice Guide, such as providing for sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution.

None of the above rules change existing practices, but the USPTO did offer one notable wrinkle in its Federal Register Notice.
Continue Reading PTAB Proposes New Rule Package – and New Preliminary Proceeding Philosophy

PTAB Appeals Focused on Merits

The SCOTUS re-calibrated the PTAB’s appeal bar in Thryv, Inc v. Click-To-Call Techs., LP., explaining that potential violations of 35 U.S.C. § 315(b) were too closely related to the institution determination of the agency to escape the appeal bar.  Since that time, the Federal Circuit has considered at least two additional issues that it may no longer have the ability to consider on appeal: RPI/privity disputes, and determinations that a patent qualifies as a Covered Business Method (CBM) patent.

As to RPI/privity, those disputes are now barred from appeal.
Continue Reading Thryv Continues to Simplify CAFC Appeal Docket

Deciding Between PTAB & District Court Venues for 112 Challenges

With an increasing number of issued patents eligible for Post Grant Review (PGR), patent challengers find themselves assessing whether PGR is worth the added estoppel risk.  That is, where a first-inventor-to-file patent is still within 9-months of issuance (PGR window), should a challenger opt for PGR, or await the availability of IPR after the 9th month?

As with many legal questions, the answer is —”it depends.”
Continue Reading PGR May Be The Place For Your 112 Case