Patent Trial & Appeal Board

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Legislative Intrusion on Article III Courts Considered in Patchek

The Supreme Court provided its most up-to-date guidance on the boundaries of Article III jurisdiction relative to acts of Congress in Patchak v. Zinke, No. 16-498. This decision, issued on February 27th, previews the varying perspectives that will drive the ultimate conclusion in Oil States.

Stating the holding of the Patchak plurality (6-3) most succinctly, and perhaps foreshadowing Oil States, Justice Ginsburg explained: “What Congress grants, it may retract.”Continue Reading Oil States Result Previewed by SCOTUS?

Federal Statutes Applicable to Tribes Absent Expression to the Contrary

In addition to the state sovereign immunity dispute now headed to the Federal Circuit, you might recall that the Patent Trial & Appeal Board (PTAB) was also considering the related question of whether sovereign immunity applies to Board proceedings involving Native American tribes. Last Friday, the Board decided that tribal immunity does not apply to USPTO proceedings in Mylan v. Saint Regis Mohawk Tribe.
Continue Reading PTAB Denies Tribal Immunity Bid

2017: A Year of CAFC Feedback & Agency Refocus

With so much attention being paid to Oil States, it was easy to lose sight of many of the more noteworthy Patent Trial & Appeal Board (PTAB) related decisions of 2017. Last year brought significant feedback from both the Federal Circuit and Board on a number important aspects of administrative trial practice. From important issues of appellate standing, the use of ancillary petition art, to a crack down on follow-on petitions and recycled prior art, both the Board and Federal Circuit delivered a host of critical clarifications.

While a bit later than usual…below are my Top 5 PTAB Trial-related Developments of 2017.  
Continue Reading Top 5 PTAB Related Decisions of 2017

Federal Circuit to Consider PTAB Sovereign Immunity Defense

State-affiliated entities enjoy immunity from suit in federal courts under the 11th amendment. To date, a handful of such entities have successfully leveraged the same immunity theory to avoid review of their patents before the Patent Trial & Appeal Board (PTAB). While still other Patent Owners have aligned themselves with Native American Tribes in an effort to benefit from their sovereign status in the hopes of avoiding PTAB review.

More recently, in Ericsson v. Regents of the University of Minnesota.the PTAB has determined that sovereign immunity is waived where the sovereign entity files an infringement suit. (here)

Appeal was taken from this decision this week.
Continue Reading PTAB Sovereign Immunity Dispute Heads to CAFC

Divergent Technical Teachings of a Primary Reference Matter in an Obviousness Analysis

A popular counter-argument to an obviousness attack is that the primary reference of the combination “teaches away” from the proposed combination. That is, if reference (A) is proposed to be modified by the teachings of reference (B) in some manner, and reference (A) criticizes, discredits or discourages that manner of combination, then reference (A) is said to “teach away” from the combination — thus, precluding an obviousness determination on that proposed combination.

In practice however, it is a rare reference that includes a technical explanation that is so strongly worded to satisfy the teaching away standard. Yet, as the Federal Circuit made clear this week, less pronounced evidence of divergent technical teachings cannot be disregarded by the Patent Trial & Appeal Board (PTAB).
Continue Reading CAFC Teaches Away on Teaching Away

February Webinar to Explore Litigation Strategies & PTAB Antidotes

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday, February 22nd @ 2PM (EST). The February Webinar is entitled: Roadblock PTAB: Litigation Strategies & IPR Antidotes.

Register (here)

Program Description: In the 5+ years since their inception,…

Expanded Does Not Equal “Stacking”

As I explained previously, an expanded panel at the PTAB is an exceedingly rare occurrence.  But, as the Federal Circuit made clear in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.(here), on at least one occasion, PTAB panel expansion was utilized to drive uniformity on an inconsistently decided question of law (issue joinder). That is, an expanded panel was utilized to change the underlying decision in an issue joinder dispute.  PTAB critics were quick to latch onto this “panel stacking” as evidence of an anti-patent bias. This criticism was even echoed by the Supreme Court during the Oil States argument.

Since that time, the Board has continued to utilize expanded panels on issues of importance without changing the underlying result.  However, the recent panel stacking notoriety continues to haunt all expanded panel decisions.

Dispelling this perception, the Chief Judge clarified the purpose and framework of expanded panels during yesterday’s quarterly meeting of the Patent Public Advisory Committee (PPAC).
Continue Reading PTAB Explains Expanded Panel Rationales

CRU Faster Than Before AIA, Provides Options for Patent Owners

Patent reexamination filings have fallen 86% since 2012.  With the elimination of the popular inter partes patent reexamination option in 2012, an overall decrease was certainly expected.  However, ex parte reexamination filings continue to drop every year.  Only 191 ex parte reexamination requests were filed in 2017.  This was the lowest number of ex parte reexamination filings since the mid-1990s.  While an ex parte patent challenge is far less appealing to a patent challenger than a contested proceeding (AIA trial proceeding), and this factor has undoubtedly contributed to the decreasing numbers, patent reexamination and other post-grant proceedings of the Central Reexamination Unit (CRU) still provide unique rehabilitation opportunities for patent owners.Continue Reading Thwart PTAB Attacks With These USPTO Post-Grant Options