Patent Trial & Appeal Board

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Change in PTAB Claim Construction May Make Matters Worse for Patent Owners

As I pointed out back in March, the Patent Trial & Appeal Board’s (PTAB) switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings was telegraphed in advance. The rule package, released today (here), is limited to AIA trial proceedings (IPR, PGR, CBM). Left untouched are patent interference, reexamination, reissue, supplemental examination and derivation proceedings. Upon final rule issuance (late summer/fall) AIA trial proceedings will apply a district court or “Phillips” claim construction. Given the current proposal it appears that this change will apply to all pending proceedings.

Patent Owners were quick to applaud the proposed claim construction change as a huge win……it’s not.
Continue Reading Patent Owners May Rue the Day They Pushed the PTAB to Phillips

SAS No Help to Patent Owners

Since the Supreme Court’s decision in SAS Institute there has been much speculation over its practical impact on stakeholders. That is, does SAS favor petitioners or patent owners? I’ve participated in a number of CLE panels on this topic and have been shocked by those interpreting SAS as somehow beneficial to Patent Owners.

Make no mistake about it, SAS hurts Patent Owners…bigly.
Continue Reading What Happens to PTAB Institution Rates Post-SAS?

Can Dismissal Of A Complaint Without Prejudice Unring the 315(b) Bell?

Because there hasn’t been enough change to the PTAB over the last week with SAS Institute, get ready for more…but this one will aid Patent Owners.

Yesterday the Federal Circuit heard argument (again) in relation to the 2013 IPR filing in Oracle Corp. v. Click-to-Call Techs. LP.  As a reminder the PTAB’s decision in this dispute was designated precedential. (Section (III.A)). The precedential portion explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b). This was a critical determination to this petition as it appeared that one of the identified petition filers had been served with a complaint outside of the one-year IPR window. The Federal Circuit was able to reach this timing issue for the first time on appeal after WiFi One.

During yesterday’s oral argument, it appeared that this PTAB precedent will fall.
Continue Reading IPR Time Bar Exception to End?

Upcoming PTAB Related CLE

Even before last week’s Supreme Court opinions in Oil States and SAS, the month of May was already jam packed with PTAB-related CLE.

This week, there are a number of shorter, focused webinars, as well as the MIP PTAB forum in New York. Mid-May brings PLI’s flagship PTAB Trials 2018.…

Pending Cases to Revisit Pruned Claims/Grounds

Today the Patent Trial & Appeal Board (PTAB) issued guidance on the impact of SAS on AIA trial proceedings. The guidance explains that:

[F]or pending trials in which a panel has
instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised

…

Patent Owners Will Not Like the Post-SAS PTAB

Last month, I predicted a 7-2 affirmance of Oil States (although I had Kennedy in the dissent with Gorsuch rather than Roberts). Still, the outcome of this closely watched case was hardly a surprise, nor was the content of the dissent. (here) While some will read the “narrow” holding characterization of the Oil States majority as a beacon of hope for further constitutional challenges, I don’t see that at all. Rather, I see the Court making clear that it is not indirectly endorsing any PTAB practices highlighted in the briefing, oral argument, and in the dissent — panel stacking perhaps being the most noteworthy. Going forward, I don’t see much Oil States impact at the PTAB.

SAS Institute on the other hand, will bring about some of the most significant PTAB practice changes to date.
Continue Reading How the SAS Institute Ruling Will Impact PTAB Practice

April Webinar to Explore Bio/Pharma Deals & Disputes in the PTAB Era

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday May 2nd, 2018 @ 2PM. The April webinar is entitled: Bio/Pharma Deals & Dispute Resolution in the PTAB Era.

Register (here)

The emergence of the Patent Trial…

PTAB Denies Party Submissions on Remanded IPR Appeal

A successful appeal to the Federal Circuit from the Patent Trial & Appeal Board (PTAB) typically ends in vacatur and remand. As explained a few weeks back, surprisingly, the Board is not simply correcting the record on remand to maintain its earlier decision. Rather, in most cases a remand results in an eventual victory for the appealing party.

This practice gives hope to Patent Owners who may have been assuming that absent reversal, a remand was just a longer, more painful loss.
Continue Reading PTAB Remands Looking More Like Eventual Wins for Patentees

One-Year Clerkship Opportunities

The PTAB has created and is hiring for a new Judicial Law Clerk Program. The PTAB modeled this program off the judicial law clerk program used in the federal courts.

Judicial law clerks will gain experience working at the PTAB for a one-year term directly with one or more administrative patent judges…