Patent Trial & Appeal Board

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Burden on Patent Owner to Show Product Manual Available

Does the use of a printed manual at the PTAB foreclose later use of the underlying product in litigation? We know from cases like In Star EnviroTech, Inc. v. Redline Detection, LLC et. al., 8-12-cv-01861 (CACD January 29, 2015, Order) that where a product is superior to a publication in terms of relevant detail, it is considered outside of the reach of 315(e) estoppel.

But what about where the product is the same as a manual that could have been used in the IPR?
Continue Reading Avoiding PTAB Estoppel with Physical Product Combinations

PatentsPostGrant.com March Webinar

Derivation proceedings have yet to be instituted in number at the Patent Trial & Appeal Board, but that is not due to a dearth of such disputes. Quite the contrary, in-house counsel increasingly find themselves grappling with a multitude of disparate legal considerations relative to departing employees in the First-Inventor-to-File era. Protecting…

Does 315(b) Codify Party Notice or Patent Notice?

Last summer, the Federal Circuit reversed the Patent Trial & Appeal Board’s (PTAB) practice of accepting IPR petitions as timely filed under 35 U.S.C. § 315(b) where a complaint for infringement was served outside of the one-year window, but dismissed without prejudice. Click-to-Call v. Ingenio   In its reversal, the Court reasoned that “the appropriate question is whether the voluntary, without prejudice dismissal of a civil action in which a complaint had been served nullifies an administrative time bar that is triggered by service of that complaint. It does not.”  As a result, IPR proceedings before the Board that had been instituted under that previous 315(b) exception have been terminated.

Since Click-to-Call, the question has been raised whether the 315(b) bar is triggered by a complaint for infringement of a patent where there is a question as to the ultimate patent owner, which causes the suit to be dismissed without prejudice and re-filed.

I don’t expect the Federal Circuit’s answer to be any different.
Continue Reading PTAB Identifies New Exception to One-Year Time Bar

Estopping a Winning Argument?

One of the stranger developments of recent months has been the interpretation of PTAB estoppel (315(e)(2)) to foreclose a petitioner from pursuing arguments in a district court that were successful at the PTAB. That is, a petitioner that has successfully defeated claims at the PTAB, and has received a Final Written Decision (FWD) explaining the same, is thereafter estopped from making the same successful arguments in court.

Earlier this month, the government supported this position in an amicus brief to the Federal Circuit in BTG v. Amneal. In it’s brief, the government explains that its interpretation leads to the “counterintuitive result that the district court would not be able to consider invalidity arguments that the Board found persuasive.”

Aside from interpreting the statute to be “counterintuitive” in the first instance, which is canon of sorts in statutory construction, it also requires one to construe estoppel as somehow guarding against consistency.
Continue Reading PTAB Estoppel as a Sword and Shield?

(REMINDER – Updated Link) 
PatentsPostGrant.com February Webinar

The Patent Trial & Appeal Board (PTAB) discontinued its Broadest Reasonable claim Interpretation (BRI) rubric for AIA trials in the closing weeks of 2018. With the PTAB and district courts now aligned under the Phillips claim construction standard, patent litigants must now manage parallel proceedings in the face…

Recent Decisions Find Meeting of Statutory Requirement Subject to Agency Discretion

A properly filed AIA trial trial petition must name all real-parties-in-interest (RPI). The RPI requirement is recited by a number of IPR statutes, 35 U.S.C. § 312(a); and 35 U.S.C. § 315(a), (b) and (e). (The PGR statutes include corresponding provisions).

The requirement to name all RPI’s, while seemingly straightforward, has been the subject of numerous disputes at the Patent Trial & Appeal Board (PTAB). Reason being, if the RPI listing is incorrect, the filing date would need to be reset.  And since petition timing can run afoul of the 1-year time bar when the filing date is adjusted (315(b)), identifying an improper RPI listing can lead to termination of the petition.

Early on in the PTAB’s existence, this RPI requirement was a “gotcha” of sorts, especially for companies having parent entities or closely controlled affiliates.  However, whether the RPI listing was inaccurate based on simple oversight, or by design, the PTAB treated the cases alike. That is, the corrected RPI listing led to a new filing date, which in many cases doomed the petition.

More recent decisions, however, take the position that termination in this regard is discretionary.Continue Reading Is RPI No Longer an Issue at the PTAB?

PatentsPostGrant.com February Webinar

The Patent Trial & Appeal Board (PTAB) discontinued its Broadest Reasonable claim Interpretation (BRI) rubric for AIA trials in the closing weeks of 2018. With the PTAB and district courts now aligned under the Phillips claim construction standard, patent litigants must now manage parallel proceedings in the face of new estoppel risks,…

Issue Joinder Practices Poised to Reset

As previously discussed, the Patent Trial & Appeal Board (PTAB) is now reconsidering its issue joinder practices. These practices were the subject of significant debate internal to the Board a few years back. The inability of the Board to arrive at a majority consensus on whether issue joinder was permitted by the AIA statutes led to the now infamous “panel stacking” decisions. These expanded panel decisions provided a brute force solution to the conflicting positions on the question of issue joinder, a de facto precedent of sorts.

With the new Precedential Opinion Panel, or “POP,” allowing for a more streamlined process for making precedent, the Board seems poised to drive official PTAB precedent on this question — but in a new direction.
Continue Reading New PTAB Precedent Panel Conducts First Hearing