The Patent Trial & Appeal Board (PTAB) issued new informative decisions this week applying its 101 Guidelines.
Ex Parte Olson, Appeal 2017-006489 (PTAB Mar. 25, 2019) (here)
The claims at issue recite a method of registering a catheter navigation system to a three-dimensional image. This decision reverses the rejection by
Back in April I discussed the Patent Trial & Appeal Board’s (PTAB) evolving position that an updated RPI designation did not require a resetting of the petition filing date. That is, despite telling Congress that the RPI was a statutory requirement for a petition to be considered in 2015, and that correction of RPI required a new filing date, the Board migrated to a new view that such mistakes could be excused if made without deceptive intent (more recently relying on a footnote in Wifi-One explaining the Board’s practice of accepting corrections to defective filings.)
Last week, the Federal Circuit issued a precedential opinion finding that the PTAB’s interpretation of its remedial regulations in this regard were not plainly erroneous or inconsistent.
Continue Reading CAFC Endorses PTAB Practice of Accepting Late RPI Designations
The SCOTUS has shown an affinity for disputes of the Patent Trial & Appeal Board (PTAB). Today, the Court took up its 5th PTAB dispute in three years granting cert in Dex Media Inc. v. Click-To-Call Technologies, LP.
The underlying dispute in Dex relates to the one-year window of 35 U.S.C. § 315(b). As is well-known, this window precludes AIA trial petitions from a party more than one year after service of a complaint of infringement. Prior to the Federal Circuit’s reversal in Dex (more familiar to practitioners as “Click-to-Call”), the Board had consistently held that where a first-filed complaint (outside the window) was dismissed without prejudice, that the original window trigger becomes a nullity. The Federal Circuit disagreed, holding that the voluntary dismissal of a civil action does not nullify an administrative time bar that is triggered by service of that complaint.
In granting cert, the Court will consider only the the threshold issue of whether 315(b) disputes are even reviewable by the Federal Circuit in view of the appeal bar of 35 U.S.C. § 314(d). That is, the Court will have an opportunity to expand upon the “shenanigans” discussed in Cuozzo Speed Techs. v. Lee that are outside of the 314(d) appeal bar.
Continue Reading SCOTUS Review of PTAB Appeal Bar Unlikely to Change 315(b) Time Bar Realities
There have been a number of developments in the courts, at the USPTO, and on the legislative side over the past few months. These developments, some of which have been discussed here at length — such as the 101 legislative effort — will continue to drive new patent strategies and
Since last summer’s decisions in Applications in Internet Time, LLC v. RPX Corp., and Worlds Inc. v. Bungie, Inc., the Patent Trial & Appeal Board (PTAB) has seen RPI/privity disputes spring back to the fore. The renewed scrutiny presents challenges for petitioners participating in joint defense groups or those obligated under indemnification agreements.
A precedential decision issued today by the Federal Circuit highlights the danger of new RPI and privy interactions post-petition filing.
Continue Reading Post-filing Conduct Impacts PTAB RPI/Privity Determinations
With the Senate conducting marathon hearings on the subject of patentable subject matter this week (i.e., 35 U.S.C. § 101), and with significant effort to date to move legislation forward, it appears that 101 change is coming — and soon.
Given the imminent legislative reset, what should you do if your patent is invalidated by the Court’s under the current 101 regime?
Continue Reading Preparing for 101 Change: Preserving Future Arguments
Since Wednesday’s release of a proposed 101 framework, some have mistakenly dismissed its legislative viability as failing to account for the interests of Big Tech — nothing could be further from the truth.
The proposal is the result of months of negotiations with the major patent stakeholders, most notably the Bio/Pharma and Tech lobbies. While the Bio/Pharma side would greatly benefit from a broadening of patent eligibility (such as proposed) to more readily secure patent protection for technologies such as medical diagnostics, the Tech Lobby has largely opposed such as it leverages 101 to fight back against abstract patent claims. To bridge this divide, the framework presents a narrowing provision that will primarily impact the claim scope of patents asserted against Tech.
Continue Reading 101 Legislative Proposal Includes Provision to Narrow Functional Claims
Last month, the Patent Trial & Appeal Board (PTAB) issued an Order explaining that maintaining multiple, concurrent proceedings per patent presents a significant burden for the Board. More specifically, where the same claims are challenged across multiple, redundant petitions (i.e., pile-on), the Board pointed out that instituting trial across all redundant filings may undermine the Office’s ability to complete proceedings in a timely manner and places an unfair burden on the Patent Owner. 35 U.S.C. § 314(a).
That petition filer, which has filed numerous redundant petitions across a large patent portfolio, is now seeing the first of its redundant petitions being denied.Continue Reading PTAB Begins to Deny Pile-On Petitions from Same Petitioner
As previously discussed, Congress is poised to revise the law of patent eligibility under 35 U.S.C. § 101. To this end, a draft framework has been floated in advance of three upcoming stakeholder meetings on the Hill (June 4th, 5th and 11th).
Today, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property, and Representatvie Doug Collins (R-GA-9), Ranking Member of the House Judiciary Committee, Hank Johnson (D-GA-4), Chairman of the House Judiciary Subommittee on Intellectual Property and the Courts, and Steve Stivers (R-OH-15) released a bipartisan, bicameral draft bill that would reform Section 101 of the Patent Act.
Continue Reading Congress Floats Draft Bill Outlining New 101 Framework
Last month the Federal Circuit decided Dodocase VR, Inc. v. Merchsource, LLC (here). In Dodocase the Federal Circuit held that a standard forum selection clause can divest the PTAB of AIA trial jurisdiction.
If maintained, the ability to avoid the Patent Trial & Appeal Board (PTAB) by private agreement would prove a game changer in periodic licensing agreements between competitors, including SEP licensors.
But, earlier this week, en banc rehearing was sought.
Continue Reading CAFC Urged to Rehear PTAB Forum Selection Dispute