The Patent Trial & Appeal Board (PTAB) will host its next “Boardside Chat” webinar this Thursday, April 5 from noon to 1 p.m. ET. The chat will discuss “Petitionable Matters, Objectionable Matters, and New Grounds of Rejections in Ex Parte Appeals.” PTAB Judges Adriene Lepiane Hanlon, Bruce Wieder, and
As pointed out yesterday over at IPWatchdog, the USPTO Solicitor has withdrawn as Intervenor in the Federal Circuit appeal between Telebrands Corporation and Tinnus Enterprises (stemming from PGR2015-00018, challenging a patent pertaining to the well-known Bunch-o-Balloons® product on indefiniteness grounds). The USPTO intervened in the earlier appeal to defend the indefiniteness standard applied in the PGR. This is because the applied standard was stricter than that enunciated in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). The application of a different, stricter standard caught some by surprise that had not realized that the Federal Circuit endorsed that very standard for agency proceedings in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
I pointed out at the time of this appeal that the Packard indefiniteness standard is grounded in ex parte examination policies and practices. As such, it was unclear whether the Court’s holding in Packard could be properly extended to AIA trial proceedings. Yet, the Solicitor’s decision to withdraw as Intervenor in the Tinnus dispute is not a sign that the agency lacks faith in its brief. Rather, the change is indicative of a new direction for PTAB trial proceedings.
Continue Reading PTAB Likely to Adopt a Philips Construction for AIA Trials in 2018
Today, the Federal Circuit issued a stay of further Patent Trial & Appeal Board (PTAB) proceedings pending the St. Regis Mohawk Tribe’s sovereign immunity appeal. The appeal challenges the Board’s determination that the Tribe is not immune from its proceedings as a sovereign entity. As a reminder, the tribe is alleged to be the new owner of Allergan patents relating to the ophthalmic Restasis®
Continue Reading CAFC Shuts Down PTAB Pending St. Regis Mohawk Tribe Appeal
Today the Patent Trial & Appeal Board (PTAB) added to its growing stockpile of cases that address the meaning of “same or substantially the same prior art or arguments” under 35 U.S.C. § 325(d). This growing body of decisions is welcome news for Patent Owners as it emphasizes the scrutiny given
Today, Representative Steve Stivers (R-OH) and Representative Bill Foster (D-IL) introduced H.R. 5340, the so-called “Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patent Act.” The bill (here) is a carbon copy of the Senate Bill (save some cosmetic changes). On the
When appealing a decision of an administrative agency such as the Patent Trial & Appeal Board (PTAB), reversal is quite rare. This is because rarely will a pure question of law (with no facts in dispute) control the outcome of such an appeal Rather, a typical PTAB appeal to the Federal Circuit will dispute whether the agency record fully supports its decision, or is complete with respect to required fact finding. In these cases vacatur and remand are appropriate.
Since 2016, as the volume of appeals from the PTAB has increased, so to has the number of remands to the agency. Where a PTAB record is incomplete, one might expect the agency to simply remedy the shortcoming on remand to maintain its earlier decision. However, two years of recent statistics reflect a more balanced outcome.
Continue Reading PTAB Remands from the CAFC: Mixed Outcomes
This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, March 28th @ 2PM (EST). The March Webinar is entitled: Evolution of PTAB Trial Practices.
Register (here)
Program Description: The Patent Trial & Appeal Board (PTAB) has
Patent owner estoppel is codified by Patent Trial & Appeal Board (PTAB) regulation (37 C.F.R. § 42.73(d)(3)(i)). This rule is designed — much like patent interference estoppel — to thwart patent owners from securing claims in a later USPTO proceeding that are patentably indistinct to claims lost in a PTAB trial. This regulation has largely flown under the radar relative to the more well-known statutory estoppel provisions that applies to failed PTAB petitioners. Yet, as I pointed out previously, patent owners, and more particularly patent prosecutors, would be wise to take heed of this new threat.
Yet, understanding this new prosecution threat is only part of the battle. The best practice going forward is to structure portfolios to minimize potential PTAB estoppel damage.
Continue Reading Standard Patent Prosecution Practices Invite Collateral PTAB Damage
In today’s Boardside Chat, the Patent Trial & Appeal Board (PTAB) explained expanded panel practice, and provided some useful insight into its work on Orange Book patents.
The statistics (here) highlight:
•83% of all petitions challenging Orange Book-listed patents result in the patent being unchanged
The USPTO’s Patent Trial & Appeal Board (PTAB) is hosting a “Chat with the Chief” webinar tomorrow, Tuesday, March 13, from noon to 1 p.m. ET. Chief Judge David Ruschke will discuss “New PTAB Studies in AIA Proceedings: Expanded Panels and Trial Outcomes for Orange Book Listed Patents.”
My previous fact check