Previously I explained that the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity from the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit. Recent amicus filings supporting the petitioner
While I will discuss my more detailed impressions during tomorrow’s webinar, a few quick thoughts.
Oil States
-Article III review of the PTAB, and more particularly de novo review of legal issues, was key to a majority of Justices.
-Trying to distinguish reexamination and
Today the Supreme Court will hear oral arguments in both the Oil States and SAS Institute appeals. Both cases have the potential to have a significant impact on proceedings at the Patent Trial and Appeal Board (PTAB) and, potentially, the entire U.S. patent system. (Follow me on Twitter @PatentPostGrant for
In implementing the Federal Circuit’s In Re Aqua Products’ holding, the Patent Trial & Appeal Board (PTAB) explains that “practice and procedure before the Board will not change.” And that, “[t]he Board will continue its current briefing practice as to the types, timing, and page limits of briefs.”
As pointed out previously, removing the burden from the Patent Owner Motion to Amend will aid the PTAB in granting far more motions, but ultimately, amendments are not expected to be any more attractive, or common.
Continue Reading PTAB: Practice & Procedure Unchanged after Aqua Products
As discussed last week, a remand to the Patent Trial & Appeal Board (PTAB) may be a short-lived victory for Patent Owners.
The PTAB has now officially revised the “Standard Operating Procedure 9 (SOP9)” directed to default procedures for cases remanded from the Federal Circuit.
Some highlights:
Section 10 of the Leahy‐Smith America Invents Act (AIA) authorizes the United States Patent and Trademark Office (USPTO) to, in part, “set or adjust by rule any fee established, authorized, or charged” under Title 35 of the United States Code. At the close of 2016, a Notice of Proposed Rule Making (NPRM) issued requesting comments from the public on proposed fee increases for post-grant patent proceedings, including AIA trials. A Final Rule Notice issued today setting significant increases to take effect on January 16th 2018 for AIA Trial Proceedings.
Continue Reading PTAB Trial Fees Set to Increase in January
Appeals from the Patent Trial & Appeal Board (PTAB) have now become a major component of the Federal Circuit’s docket. Given the deferential “substantial evidence” standard accorded PTAB decisions, upward of 60% of such appeals are simply affirmed — many without further comment. The remainder of PTAB appeals include a mixed bag of partial affirmances, reversal and/or remands. While both reversal and remand outcomes are appellate “wins” for Patent Owners, a remand for a Patent Owner is often a winning of the Federal Circuit appeal battle only to lose the PTAB war.
Continue Reading PTAB Revisited: Avoiding Federal Circuit Remands
Previously I explained that the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity from the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit. This premise has been criticized by the Supreme Court in In re Cuozzo Speed Technologies, and, more recently by the Federal Circuit in Ultratec, Inc. v. Captioncall, LLC, 2017, (Fed. Cir. Aug. 28, 2017). For this reason, sovereign immunity (including tribal immunity) is likely to fall with the Oil States challenge.
Until such time, however, the PTAB must address the issue in the ongoing IPRs of Allergan’s Restasis® patents. In doing so, the PTAB has now issued an Order inviting amicus briefing, setting a submission deadline of December 1, 2017.
Continue Reading PTAB Invites Amicus Input on Sovereign Immunity Dispute
On Monday, November 27th, the Supreme Court will hear oral arguments in both the Oil States and SAS Institute appeals. Both cases have the potential to have a significant impact on proceedings at the Patent Trial and Appeal Board (PTAB) and, potentially, the entire U.S. patent system.
The day after, November
The PTAB is hosting its first “Chat with the Chief” webinar tomorrow, Tuesday, Oct. 24, from noon to 1 p.m. ET, on the topic of multiple AIA trial petitions. Chief Judge David Ruschke will discuss new stats about multiple petition filings, the General Plastic precedential decision addressing the factors the Board