Patent Trial & Appeal Board

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CAFC Provides Last Word in PTAB Appointments Clause Debate

Given the remands that have been flowing back to the Patent Trial & Appeal Board (PTAB) from the Federal Circuit over the past few weeks, the writing has been on the wall as to en banc rehearing in Arthrex v. Smith & Nephew Inc.  The Court officially denied rehearing today.  Still, the 62 pages of differing viewpoints offered by the Court in its denial of rehearing essentially presented the Court’s collective reasoning anyway.

The per curiam opinion explained the earlier decision in the context of the dissenting views. That is, as between striking down the AIA and severing Title 5 protections for administrative patent judges, Congress was more likely to favor the latter.Continue Reading Arthrex & 81 PTAB Remands

PTAB Estoppel & Inequitable Conduct

Inequitable conduct before the USPTO is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. Thereasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011).  Given the increasing inventory of Final Written Decisions (FWD) in larger patent portfolios, practitioners are only now beginning to confront issues of inequitable conduct relating to agency based estoppel.  That is, if a patent owner advances a position inconsistent with a previous PTAB FWD on a patent/related patent under 37 C.F.R. § 42.73(d)(3), whether such a practice constitutes inequitable conduct. It just might.

But, for the time being, the courts’ lack of experience with the PTAB’s rule-based estoppel is benefiting patent owners.
Continue Reading Patent Prosecution After an Adverse PTAB FWD – Beware

Court Finds Issue Joinder Inconsistent with AIA Statute

As I predicted back in August, the Federal Circuit has now effectively reversed the PTAB’s first Precedential Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)  In this decision, the POP held that 35 U.S.C. § 315(c) provides discretion to allow a petitioner to be “joined” to a proceeding in which it is already a party, and provides discretion to allow joinder of new issues into an existing proceeding (here).

In  Facebook, Inc. v. Windy City Innovations, LLC, the Federal Circuit held that 315(c) was not ambiguous—an existing “party” to a proceeding cannot be joined as a party— and, as such there was no reason to even consider the earlier POP precedent for according any Chevron or Skidmore deference.  However, the Court then went on to explain that even if there were ambiguity, the POP decision would not be accorded deference in accordance with administrative law principles.
Continue Reading CAFC Reverses PTAB POP Precedent

Extraordinary Situation May Extend Some Trial Schedules

Yesterday the USPTO issued guidance on the Coronavirus outbreak, explaining that it considered the effects of the Covid 19 pandemic to be an “extraordinary situation” within the meaning of 37 C.F.R.§ 1.183 and 37 C.F.R. 2.146 (trademarks).  The guidance waived revival fees for ex parte patent/trademark applications and patent reexamination matters that went abandoned as a result of missing a deadline.

The guidance did not address AIA Trial Proceedings.  The agency’s position that the pandemic is an “extraordinary situation,” however, is sure to result in party requests to extend 12-month PTAB trial schedules.
Continue Reading PTAB Trial Schedules & Covid 19

Expert Agency Shown Deference in Matters of Claim Scope

While IPR petitioners may only challenge patent claims based upon patents and printed publications (§§ 102 and 103), the PTAB trial record can be leveraged in parallel district court proceedings on related issues.  For example, PTAB fact findings on claim construction have been adopted by district courts on motions for summary judgment. And recently, a plaintiff in the District of Utah leveraged a PTAB finding to obtain a favorable outcome regarding indefiniteness on summary judgment.
Continue Reading Leveraging PTAB Records in District Court

Public Policy Disfavors the Issuance of Unexamined Patent Claims

Last November, the PTAB ordered Precedential Opinion Panel (POP) review of the final written decision in  Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The rehearing request in Hunting sought review of the Board’s denial of a Motion to Amend based upon an alleged sua sponte modification of a petitioner’s anticipation ground by the panel (here).  That is, the POP is reviewing the Board’s role in the amendment process where a petitioner either decides not to challenge an amended claim, or does so in a deficient manner that is apparent to the expert agency.

Does the PTO owe a duty to the public from issuing amended claims that have not been adequately examined/reviewed for patentability?
Continue Reading The PTAB’s Important Role in the Policing of Amended Patent Claims

Attorney Fees Available for Successful Defendant

As discussed back in September, district courts look to PTAB developments in assessing fee awards under 35 U.S.C. § 285. Recently the Eastern District of Michigan suggested that it could even find “exceptional” conduct at the PTAB as the sole basis for attorney fees.

Last week, the Southern District of California found that conduct substantially before the PTAB entitled a successful petitioner to attorney fees.
Continue Reading Court Leverages PTAB Result in Awarding Attorney Fees

GE Argues CAFC Patent Exceptionalism

Back in July, I predicted that competitor standing in PTAB appeals was a debate destined for cert petition. That petition was filed last Wednesday in Gen. Elec. Co. v. United Techs. Corp. (“GE”)

As a reminder, in GE the Federal Circuit held that for the competitor standing doctrine to apply in appeals from the PTAB, the government action must change the competitive landscape by, for example, creating new benefits to competitors (citing its earlier decision in AVX Corp. v. Presidio Components, Inc.).  The Court further explained that the government action with respect to a unique property right like a patent, militates in favor of a narrower application of the precedent. The holding in GE drew a concurrence from Judge Hughes (as bound by precedent), which explained his differing views on the Court’s competitor standing jurisprudence.

GE has pressed the views of Judge Hughes in its cert petition.
Continue Reading Competitor Standing in PTAB Appeals Pursued to SCOTUS

CAFC Implies PTO Might Overlook Some 112 Issues

The Patent Trial & Appeal Board (PTAB) does not accept trial grounds under 35 U.S.C § 112 in Inter Partes Review.  This is because the IPR statutes only authorize trial grounds based on patents and printed publications.  The same has been true of patent reexamination for decades.

Last week, in Samsung Elec. Am., Inc. v. Prisua Eng’g Corp., the Federal Circuit considered whether the Board may cancel claims under 112 when such issues arise during trial.  The Court held that the PTAB may not cancel claims under 112, but instead, might, for certain types of claims, proceed to decide the prior art grounds.
Continue Reading Should the PTAB Determine Patentability of Unsupported Means-Plus-Function Claims?

CAFC Holds Petitioner to PTAB Choice

While we await the en banc determination in Arthrex/Polaris, there have been a number of recent remands back to the PTAB (i.e., where the Appointments Clause issue was first raised in the opening appellate brief). Given this, it may be that the Federal Circuit remains unimpressed with the government’s argument that failure to raise the issue before the PTAB results in forfeiture of the argument.  Still, given the supplemental briefing in Polaris as to the sufficiency of the Arthrex remedy, I am still expecting that at least this aspect of the debate is taken up en banc.

In the meantime, the Federal Circuit has made clear that the Appointments Clause issue will not benefit failed PTAB petitioners.Continue Reading No Arthrex Relief for Failed PTAB Petitioners