A few CLE programs on the horizon, including the PTAB Bar Association annual meeting and the inaugural IPWatchdog Con!
First, this Tuesday at 1PM (EST) Stafford Legal presents the webinar: Patent Reexamination and Patent Reissue as Litigation Tools – Insulating Your Patent Portfolio From New Threats. This program
Back in August, I pointed out that district courts continue to grapple with whether or not physical products described by prior art publications of an earlier Patent Trial & Appeal Board (PTAB) trial are subject to 315(e)(2) estoppel. That is, by virtue of utilizing a product manual in the earlier PTAB proceeding, whether the actual products corresponding to such a manual can be considered “raised, or reasonably could have been raised” under 35 U.S.C. § 315(e)(2).
The view of some districts has been that since physical products can’t be raised at the PTAB, such evidence is simply outside the scope of estoppel. Others take a narrower view, weighing the potential technical superiority of the physical product to the previously used publication. In another twist on this fact pattern, the District of Delaware recently considered whether the underlying evidence of these disputes should be the focus at all.
Continue Reading PTAB Estoppel: Grounds vs. Evidence
As detailed back in December, the government has sought en banc rehearing in Arthrex. In its petition, the government revisited the bases for the Court’s October decision and encouraged the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency).
In its Reply of last week, the government once again focuses on forfeiture, arguing that raising an Appointments Clause issue on appeal is too late. To emphasize the issue, the Reply lists all of the newly filed appeals raising the issue for the first time.
Continue Reading Gov’t Warns CAFC Over Growing Arthrex Docket
IPR estoppel under 35 U.S.C. § 315(e)(2) provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added). As pointed out previously, a growing number of district courts have construed the phrase the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) to define grounds that a party could have included in its petition, but did not.
Assuming a failed petitioner can locate a piece of prior art that it could not have raised earlier (and make the appropriate showing to avoid estoppel) are combinations with failed art of the IPR precluded?
Continue Reading Rehabilitating Failed PTAB Art
On Monday, I laid out my Top 5 PTAB cases of 2019 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like Monday’s list, my Top 5 PTAB developments of 2019 for District Court Litigators will focus on those practical developments that will impact related litigation practices outside of the agency.
In 2019, there were a number developments of interest to litigators, from tricks to avoid the PTAB altogether, to new risks on fee awards and estoppel.
Continue Reading Top 5 PTAB Developments of 2019 for District Court Litigators
There were a number of high profile developments at the Patent Trial & Appeal Board (PTAB) in 2019. New procedures for amending claims, Practice Guide updates to thwart parallel petition filings, a successful constitutional challenge based on the Appointments Clause, and another SCOTUS review of the PTAB appeal bar. But, not all of these developments impact the day-to-day life of PTAB practitioners. Of greater interest to PTAB practitioners are the developments that change the game for the average AIA trial, with this in mind, below are my Top 5 PTAB Practitioner Developments of 2019.
Continue Reading Top 5 PTAB Decisions of 2019 for PTAB Practitioners
Over the years, the Patent Trial & Appeal Board had become panel dependent in assessing questions of public accessibility at institution. Some panels seemed to require a showing of a likelihood of public accessibility to move forward, while others required a more definitive showing. Last spring, the Precedential Opinion Panel (POP) took up this growing rift in institution standards in Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039. Specifically, the POP addressed the requirements for establishing that a reference qualifies as a printed publication at the time of institution.
In its now precedential decision, the Board found that a more flexible approach was needed at institution.
Continue Reading PTAB POP Recalibrates Institution Analysis for Public Accessibility
As promised, the government has now sought en banc rehearing in Arthrex. In its petition, the government revisits the bases for the Court’s October decision and encourages the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency)
I think it is safe to predict the CAFC takes this one up.Continue Reading En Banc CAFC to Debate PTAB Appointments Clause Issue
All you want for Xmas is PTAB CLE, admit it! Lucky for you there are two programs to choose from this week.
First up, tomorrow brings PLI’s one-hour briefing entitled: Arthrex/Polaris – The Evolving Impact of the PTAB Appointments Clause Debate. As the title makes clear, this program will
For those interested in motion to amend practice in AIA trials, the Patent Trial & Appeal Board (PTAB) will be conducting a webinar on the topic this Wednesday, December 4th from noon to 1PM (EST) (here)
Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will address a