Through more focused strategy, patent owners have ensured that Patent Trial and Appeal Board (PTAB) proceedings are not overwhelmingly fatal to Orange and Purple Book patents. In fact, patent invalidity rates at the PTAB now rival those in district court litigation.
Ropes and Gray’s IP Litigation (Life Sciences) Chair
The impact of the Supreme Court’s decision in SAS Institute has been immediate and far-reaching. As explained last week, the courts have quickly realized the import of this Patent Trial & Appeal Board (PTAB) practice change on motions to stay. As for the PTAB itself, the agency is currently grappling with the unexpected expansion of roughly 50% of its current caseload. With a significant number of PTAB trial appeals on the docket of the Federal Circuit, questions remained as to how the Court might resolve the SAS questions in the cases pending before it.
Today, the court issued a precedential decision in PGS Geophysical AS v. Iancu in which the Court found outstanding SAS issues did not deprive it of appellate jurisdiction.
Continue Reading CAFC Clarifies SAS Impact on Pending Appeals
Today from noon to 1 PM (EST), Chief Judge David Ruschke will provide additional information about the impact of SAS on AIA trial proceedings. He will also share new information about motion to amend practice, and discuss the recently published Notice of Proposed Rule-making on the claim construction standard
In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), regarding motion to amend practice and procedure in AIA trials, the Patent Trial & Appeal Board (PTAB) has
At the time SAS Institute first raised its challenge to the partial institution practices of the Patent Trial & Appeal Board (PTAB), I explained that should this argument ultimately prevail that it would be bad news for Patent Owners. Patent Owners facing a motion to stay pending PTAB review frequently leveraged partial institutions to defeat the stay. Such motions were denied because one of the factors considered in the motion analysis is the potential for “simplification of issues for trial.” And where a trial would eventually be conducted regardless of PTAB outcome — the case when there was a partial institution — this factor weighed strongly in favor of Patent Owners continuing the district court litigation .
Post-SAS, this argument is now gone. The impact of SAS on common stay scenarios is already being felt by Patent Owners.
Continue Reading New SAS Reality Impacts Motion to Stay Analysis
This Thursday the IPO Chat Channel will feature the Chief Judge of the Patent Trial & Appeal Board (PTAB) on the program entitled: A New PTAB Landscape: The Impact of SAS, Recent Federal Circuit Decisions, and the Proposed Change to the BRI Standard. The program will
The new Director of the U.S. Patent & Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) in record time. With only a few weeks on the job, the Director issued a NPRM to switch the Broadest Reasonable Interpretation (BRI) currently used in Patent Trial & Appeal Board (PTAB) trial proceedings to a Phillips claim construction. The proposal was quickly lauded by Patent Owners believing that the application of the Phillips standard by the PTAB will lead to narrower claim constructions, and thus, more patents being upheld by the agency. But, as I pointed out previously, in practice, BRI is rarely different from a Phillips construction. In fact, utilizing the same standard at the PTAB as in the courts might only make matters worse for Patent Owners from a monetization perspective.
Impact of the proposed claim construction change aside, the speed at which the Director has acted speaks to his keen interest in improving the PTAB playing field for Patent Owners. With the Director expected to issue further proposals to aid Patent Owners, below are some likely candidates.
Continue Reading How Might the Director Improve the PTAB for Patent Owners?
On June 4th, the Federal Circuit will hear arguments in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. As a reminder this case will explore whether principles of sovereign immunity prevent the Patent Trial & Appeal Board (PTAB) from conducting an Inter Partes Review (IPR) of a patent owned by a Native American tribe.
In advance of the upcoming hearing, the U.S. Dept. of Justice has filed its amicus brief supporting the agency’s decision to deny immunity. The government brief explains that “[n]o principle of sovereign immunity entitles an Indian tribe to withhold a public franchise from reconsideration by the superior sovereign that granted it.”
Continue Reading PTAB’s Sovereign Power Superior to State/Tribes
PLI’s PTAB Trials 2018 will be held this Tuesday, May 15th in San Francisco. If you can’t get there in person, strongly consider the webinar of this full-day event. PLI’s comprehensive program is the longest running and most widely attended PTAB-related CLE in existence. Rather than just exploring PTAB
While the Patent Trial & Appeal Board’s (PTAB) plan to switch from the broadest reasonable interpretation (BRI) to a Phillips claim construction may not be the magic bullet that Patent Owner’s expect, the switch will pose strategic problems for petitioners. Even though the PTAB rarely discerns a difference between a BRI and Phillips constructions, the courts think very differently than the expert agency. For this reason, Petitioners often cited to the different claim construction standards to explain away the application of a broader read at the PTAB as compared to that urged in the court. This enabled petitioners to take positions on claim breadth in PTAB petitions that would otherwise undermine a non-infringement position if advanced under Phillips.
Going forward at the PTAB under Phillips, petitioners will be forced to commit to a one-size-fits-all claim construction.
Continue Reading A Phillips Construction Will Complicate PTAB Petition Drafting