Today, AIPLA presents Patent Infringement & The PTAB: The Emergence of a Bifurcated System? (here) The webinar will be conducted 1230 – 2PM (EST). CLE credit is available.
AIA Trial Proceedings were designed by Congress to provide an alternative route to challenging patent validity.
A few weeks back I pointed out that the Patent Trial & Appeal Board (PTAB) had changed its position on whether or not a new RPI designation requires a resetting of the petition filing date. It has now made that determination precedential, along with two other decisions on the topic.
Continue Reading PTAB Determines that RPI Designation is Not a Statutory Requirement After All
Last week in Novartis Pharmaceutical Corp. v. Par Pharmaceutical Inc., Nos. 14-1289-RGA, 14-1494-RGA, 15-0078-RGA (D. Del. Apr. 11, 2019), (here) the court addressed a motion to estop defendants from asserting invalidity arguments based on prior art references already presented at trial. The motion argued that, in related IPR proceedings brought while litigation was pending, the same defendants challenged and failed to prove the unpatentability of overlapping claims. The Board’s Final Written Decision (FWD) issued during the appeal. (later remanded back to D.Del)
Novartis argued that, irrespective of the timing of the FWD, that the invalidity defenses and counterclaims presented at trial by defendants should be estopped.
Continue Reading PTAB Estoppel Thwarts Post-Trial Invalidity Consideration
At several bar events over the past few weeks, the Director has made clear that the agency is “looking into” ways to address certain serial petitioning practices beyond that of the “follow-on” scenario. For example, where multiple petitions are filed at the same time for the sole purpose of multiplying the number of grounds for an AIA trial proceeding.
This past Tuesday, the Senate Judiciary Committee sent a letter to Director Iancu seemingly asking him to do what he is already doing. And for him to respond to proposed directives (transparently presented in the form of questions) on accomplishing such.
Continue Reading Senate Provides Directives to USPTO to Attack Serial PTAB Filings
Back in 2016, I flagged a few district court decisions that leveraged Patent Trial & Appeal Board (PTAB) fact-finding on summary determination. These decisions weighed the fact finding of the expert agency as “compelling evidence” and noted the Board”s “expertise in evaluating prior art and assessing patent validity.” While crediting the fact finding on common technical issues, these decisions stopped short of finding outright issue preclusion based upon the earlier PTAB proceeding.
However in some instances, PTAB determinations might be leveraged to attack claims that slipped through the PTAB net.
Continue Reading PTAB Collateral Estoppel as Summary Judgment Tool
This Wednesday, April 10, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar about the new pilot program for motions to amend in AIA trials. Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will present.
The latest constitutional challenge to the Patent Trial & Appeal Board (PTAB) involves the Appointments Clause.
The Appointments Clause of the U.S. Constitution has been interpreted to require that only “Principal Officers” of the United States — appointed by the President and confirmed by the Senate — can exercise “significant authority” pursuant to the laws of the United States. What is significant authority, you ask? In a nutshell, the final word of the U.S. government.
So the debate in the now pending petition for certiorari in Polaris Innovations Ltd. v. Kingston Tech. (and in other petitions for cert raising the same issue) has become whether the APJs of the PTAB are superior officers rendering the final word of the government in PTAB trial proceedings, or whether they are instead functioning as “inferior officers” subject to the control of the Director (a political appointee, confirmed by the Senate).
The Government weighed in earlier this week on these petitions for certiorari.
Continue Reading PTAB Judges Argued as Inferior Officers
The Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar this Thursday, April 4th from noon to 1pm(EST). The webinar will introduce new Chief Judge Scott Boalick and Deputy Chief Judge Jackie Bonilla. The judges will discuss recent precedential and informative decisions issued by
Although the United States has been a first-inventor-to-file patent system since March 16th 2013, the patents of the previous first-to-invent system will linger for many years to come. For those patents, the ability to “swear behind” prior art will remain.
Under pre-AIA §102(g), when two persons invent the same invention, for the latter inventor to be entitled to the patent, she must demonstrate that she (1) was the first to conceive of the invention and (2) was reasonably diligent in reducing it to practice. The Federal Circuit recently ruled on what, exactly, “reasonable diligence” entails at the Patent Trial & Appeal Board (PTAB) in Arctic Cat Inc. v. GEP Power Products, Inc. (here)
Continue Reading Reasonable Diligence & Antedating Evidence
Under Section 337 of the Tariff Act of 1930, the International Trade Commission (ITC) is required to conclude its investigations and make determinations “at the earliest practicable time.” 19 U.S.C. § 1337(b)(1). This mandate for speed in ITC proceedings drives the Commission forward despite parallel Patent Trial & Appeal Board (PTAB) proceedings. The fact that the ITC, unlike district courts, cannot award monetary relief only contributes further to the Commission’s aversion to stays pending PTAB review.
Increasingly, however, PTAB proceedings concluding prior to enforcement, are catching the eye of the Commission. In such scenarios, an adverse PTAB ruling against a subject patent can result in a suspension of enforcement.Continue Reading PTAB Speed vs. ITC Speed