The Patent Trial & Appeal Board (PTAB) will conduct a Boardside Chat today from noon to 1PM (EST) for those wanting to learn AIA Trial basics. Lead Judge James Worth and Judge Alyssa Finamore will walk through the AIA trial process and explain each step in detail. Access
Today, the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the current Federal Circuit solution was effective in curing the Appointments Clause defect, while there was some debate over whether the “fix” would hold, all of today’s witnesses were unanimous in that Congress, could, and should, fix the issue in the short term.
Continue Reading House Judiciary Told Legislative Fix to Arthrex Defect is Necessary
As expected, the government has informed the Federal Circuit of its intention to seek en banc rehearing in Arthrex Inc. v. Smith & Nephew, Inc. Having intervened in a number of cases seeking remand post-Arthrex the government has now moved to stay these proceedings pending its en banc petition.
Continue Reading Government Indicates En Banc Petition Forthcoming for Arthrex
During last week’s argument in Polaris, appellant argued that the Court’s fix to the PTAB’s Appointments Clause problem was insufficient. According to appellant, “reviewability” is the touchstone of recent Appointments Clause precedent, and that as the proposed fix did not address the lack of reviewability over APJ decisions (because the Federal Circuit could not), it was up to Congress to fix. During that same hearing, the Court contemplated additional briefing on this topic, which it recently solicited from the parties.
In the meantime, learning from its mistake in its recent Uniloc remand, the Federal Circuit is now allowing time for the government to intervene in parties seeking remand after Arthrex (here) and (here).
Continue Reading Lawmakers Consider Fix as CAFC Deals With PTAB Appointments Clause Fallout
Prior to last year’s SAS decision, district courts split over whether non-petitioned grounds were embraced by the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) and 325(e)(2) estoppel. However, a growing number of district courts post-SAS have construed this phrase to define grounds that a party could have included in its petition, but did not. In doing so, the courts are also making clear that the burden of proving that a ground could have reasonably have been raised, lies with the Patent Owner.
Continue Reading Courts Apply More Flexible Analysis to PTAB Estoppel
With the ink barely dry on Thursday’s Federal Circuit ruling that the Administrative Patent Judges (APJs) of the Patent Trial & Appeal Board (PTAB) were unconstitutionally appointed, Appellant Notices of Supplemental Authority began to roll into the Court Friday morning. For Appellants that had appropriately raised the issue in their opening brief to the Court, some were remanded to the PTAB (Uniloc 2017 LLC. v. Facebook Inc.). Other such appeals were allowed to proceed to oral argument based, in part, on DOJ involvement. (such as today’s argument in Polaris Innovations Limited v Kingston Technology Co. Inc.)
For Appellants hoping to take advantage of the Appointments Clause development who had not briefed it, the Court found such arguments forfeited.
Continue Reading CAFC Quickly Shuts Down Belated Appointments Clause Arguments
On the heels of the supplemental briefing discussed yesterday, the Federal Circuit has already issued its decision in Arthrex Inc. v. Smith & Nephew, Inc. The Court has vacated and remanded the decision, ordering a new hearing before a panel of different APJs, prospectively remedying the issue by severing the problematic aspect of 35 U.S.C. § 3(c).
So, what does this mean for pending appeals?
Continue Reading CAFC: PTAB Judges Operating in Violation of Appointments Clause
As discussed last week, the Federal Circuit has requested supplemental briefing in Arthrex Inc. v. Smith & Nephew to assess how best to remedy a potential Appointments Clause violation. The supplemental briefing has now been submitted. While the Court deliberates whether it is appropriate to remand or vacate the Arthrex matter, the government’s brief and Appellee brief look to the potential impact in other PTAB appeals.
Continue Reading CAFC Warned Hundreds of PTAB Appeals Potentially Subject to Appointments Clause Fallout
The November edition of the PatentsPostGrant.com webinar series will be held Monday, November 4th@ 2-3PM (EST). The November program will focus on emerging appellate issues expected to drive PTAB practice in the months ahead.
The webinar is entitled: PTAB Reset 2020: Appointments Clause Turmoil & Appellate Docket
Back in June I explained the latest constitutional challenge to AIA Trial Proceedings under the Appointments Clause of the U.S. Constitution. In a nutshell, the argument is that PTAB Administrative Patent Judges (APJ) are “superior officers” delivering the final word of the government in PTAB trial proceedings. And that, as such, APJ actions are unconstitutional since they are not political appointees confirmed by the U.S. Senate — as the Appointments Clause requires.
That argument found its way to the Federal Circuit earlier this month in Arthrex Inc. v. Smith & Nephew, Inc. At oral argument, the Court probed the Director’s ability to remove APJs, and seemed concerned that this deficiency was enough to violate the Appointments Clause. An Order issued last week for additional briefing appears to reinforce the expectation that the Court will find the APJs functioning in violation of the Appointments Clause.Continue Reading Patent Owner Trick or Treat? – Appointments Clause Debate to Jolt PTAB