The Patent Trial & Appeal Board (PTAB) has issued an update to its Trial Practice Guide. The update includes notable practice changes that favor Patent Owners. Going forward, Patent Owners will have the last word in briefing, and at oral argument. These changes, along with the imminent
This Tuesday @1pm(EST), the Practising Law Institute (PLI) will host the webcast entitled: Patent Owners and the PTAB – Is There a Light at the End of the Tunnel? The program will explore a host of recent developments, not the least of which is the recent changes
The Federal Register will issue a notice updating the Patent Trial & Appeal Board (PTAB) Trial Practice Guide on Monday, August 13, 2018. You can find a copy of this notice in the advanced reading room (here). The update provides a number of changes to update the guide as to outdated material, but more importantly, provides significant, new benefits for Patent Owners.
Continue Reading Patent Owners to Get Last Word at PTAB – Starting Now
Public Accessibility: A Fact Intensive Inquiry
Yesterday I highlighted a significant decision for Patent Trial & Appeal Board (PTAB) practitioners pertaining to Real-Party-In-Interest (RPI) and privity determinations, Applications in Internet Time, LLC v. RPX Corporation. In Applications, the Federal Circuit faulted the Board for its narrow analysis of the facts, explaining that a more fact-intensive analysis was in order that takes into consideration the complete record. The Court’s rebuke of the PTAB’s RPI/Privy analyses reminded me of another significant Federal Circuit decision of the last few weeks that will recalibrate established PTAB practices.
In Medtronic, Inc. v. Barry the Court also faulted the Board for its narrow analysis of public accessibility. And, like its decision in Applications, directed the Board to perform a more fact intensive analysis of the entire record.
Continue Reading Printed Publications & The PTAB
Prior to the Federal Circuit’s decision in WiFi One, real-party-in-interest/privy disputes in AIA trials were the sole province of the Patent Trial & Appeal Board (PTAB). Now that the softened appeal bar allows consideration of such disputes (especially as they relate to the one year window of 315(b)), the Court is recalibrating PTAB practices in this regard.
Earlier this month, the Court issued its decision in Applications in Internet Time, LLC v. RPX Corporation. The public version of that opinion was issued yesterday, explaining that the Board was unduly narrow in its RPI analysis. This is one of the more significant decisions on PTAB practice this year and will very likely reinvigorate RPI/privy disputes at the Board.
Continue Reading PTAB Faulted for its Narrow RPI/Privy Analyses
While the summer months are relatively quiet when it comes to marquee CLE events and bar organization gatherings, the Patent Trial & Appeal Board (PTAB) is providing a rare opportunity for stakeholders in late July.
On the heels of its successful programs in Alexandria, Denver and Dallas, the
The Stronger Patent Act has failed to gain traction for several years now. The Bill is deemed to one-sided, proposing legislative changes that would effectively kill AIA trial proceedings. Strangely, a new bill was introduced last week that goes even further.
The so-called Restoring America’s Leadership in Innovation Act
Next Thursday, June 28th, the USPTO (Alexandria-HQ) will host its 2018 Patent Trial & Appeal Board (PTAB) Judicial Conference. If you are unable to attend the Alexandria kick-off, the same program will be making its rounds to the regional offices: Detroit (7/9), Denver (7/11), San Jose (7/26),
While most remember the Cuozzo appeal as challenging the Patent Trial & Appeal Board’s (PTAB) claim construction practices, it also challenged the Board’s discretion to institute claims on grounds not presented in the IPR petition. But, the High Court deemed this issue unreachable given the appeal bar of 35 U.S.C. § 315(b). Still, the Federal Circuit has expressly endorsed the Board’s ability to modify the grounds presented in trial petitions.
Today, the Federal Circuit has made clear in Sirona Dental SystemsGMBH v. Institut Straumann AG (precedential) that the Supreme Court’s decision in SAS Institute eliminates any ability of the Board to modify a petitioner’s trial grounds.
Continue Reading CAFC: PTAB Must Not Reformulate Petition Grounds
As explained earlier this week in a study by my partner Filko Prugo, Orange & Purple Book patents fare no worse at the PTAB than in the courts. That said, some believe that the ability to challenge such patents in a faster, cheaper expert forum upsets the balance of power in the existing drug innovator landscape.
Today, Senator Orrin Hatch (R-UT), the Chairman of the Senate Republican High-Tech Task Force and co-author of the Hatch-Waxman Act, filed an amendment in the Senate Judiciary Committee to in his words “restore the careful balance the Hatch-Waxman Act struck to incentivize generic drug development.” Senator Hatch’s amendment, the Hatch-Waxman Integrity Act of 2018, is argued to prevent alternative procedures for challenging drug patents from tilting the playing field contrary to Hatch-Waxman’s design. It is also argued to ensure that brand-name and generic manufacturers alike have the proper incentives to develop life-saving medications.
Continue Reading Senate Moves to Exclude Orange & Purple Book Patents from PTAB