Patent Trial & Appeal Board

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First Hedge Fund IPR Ready for PTAB Institution Decision

Earlier this week, Acorda Therapeutics filed its response to the first of the now notorious hedge fund IPR filings in (IPR2015-00720). In its response (here), Acorda points out that unnamed investors are directly funding the filing, yet remain unknown to the public despite the requirements to list all real-parties-in-interest.  Acorda also points out the profiteering nature of the filing as a means to influence the price per share of publicly traded stocks, which is inconsistent with the PTAB’s congressional mandate.

Since the first round of hedge fund filings, the same entities have filed upward of 15 IPRs. Additional copycat IPR filings have followed from other hedge funds. Meanwhile, the demand for the PTAB’s limited resources remains at an all time high from parties with legitimate patent disputes. 

As I have pointed out previously, independent of the RPI issue, the Board has the power to shut down this burgeoning avenue of abuse, and should do so quickly (a decision is not due until 8/26).  While Congress is poised to quickly provide a statutory control to cut off this chicanery, the public would be far better off if the PTAB exercised its discretion. Such decisive action by the agency would avoid the unintended consequences that would certainly follow the current legislative proposals. 

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Continue Reading First Hedge Fund Filing Moves to PTAB Decision

June/July PTAB CLE

The USPTO’s Patent Trial & Appeal Board (PTAB) will host its third  “Boardside Chat” lunch webinar on Tuesday June 2nd from noon to 1PM. This month’s chat will focus on “Discovery in AIA Trials.”  I will be speaking on the practitioner panel.  Registration information for this program is available at the above link.

The PTAB’s bi-monthly chat program updates the public oncurrent Board activities and initiatives. The full schedule is listed at the end of this post, including links to past chats.
An interesting option for those tracking legislative efforts will be

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Continue Reading PTAB Boardside Chats & More for June of 2015

Today’s Federal Register Notice provides the long awaited “quick-fix” rule changes. The rules codify the changes announced on Director Lee’s March 27th blog post, which provided for the use of a claim appendix in Motions to Amend, expanded page limits for such Motions, and expanded page limits for Petitioner Replies.

The final rules (…

Board Updates Public on Manner of Designating Expanded Panel

As the Patent Trial & Appeal Board (PTAB) is now issuing an increasing number of Final Written Decisions (FWD) in addition to Institution Decisions, it is, not surprisingly, experiencing an increasing number of Requests for Rehearing. Many such Requests are seeking expanded panel review.  To date, the Board has issued expanded panel decisions in a small handful of cases directed to fundamental questions of law and AIA trial practice. For example, expanded panels were used in Target Corp. v. Destination Maternity Corp., (IPR2014-00508), which was expanded twice to explore issue joinder authority of 35 U.S.C. §315(c), and Apple Inc., v. Rensselaer Polytechnic Instit., LLC., Case (IPR2014-00319) to explore 35 U.S.C. §315(b). Since these decisions, parties seeking rehearing have been asking for the same expanded panel treatment.

Last Friday the PTAB issued two informative decisions, which make clear that designation of an expanded panel is not by party request, but rather, and internal decision of the Board.

The intent of these informative decisions is clearly to eliminate such requests going forward.  However, it seems likely that such requests, or “suggestions”  will likely persist in one form or another.

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Continue Reading PTAB Expanded Panels Are Not by Party Request

New Senate Bill, Patent Act of 2015 Introduced

Today, key drafters of the America Invents Act introduced their own bipartisan patent reform bill in the Senate.  (Senators, Grassley (R – Iowa), Leahy (D- Vt.);  Coryn (R – Tx), Schumer (D -NY), Lee (R- UT), Hatch (R- UT), and Klobuchar (D – Minn.)). The bill entitled: Protecting American…

April PatentsPostGrant.com Free Webinar Tomorrow

Don’t forget to register for tomorrow’s webinar (Wednesday April 29th @12:30 (est)), entitled: Trends, Changes & Evolving PTAB Practices (speakers: Scott McKeown & Greg Gardella). As the title suggests, the webinar will cover important developments, rule changes and trends at the PTAB, as well as anticipated rule changes and legislative initiatives. Register (HERE). A sampling of tomorrow’s content is provided below.
Continue Reading Trends, Changes, & Evolving PTAB Practice

PTAB Scheduling Orders Begin Suggesting ADR Statements

The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or a Covered Business Method (CBM) proceeding upon request of the parties. This discretionary power to terminate a patentability challenge by agreement (37 C.F.R. § 42.74) is a fairly new concept for patentability challenges. Historically reexamination proceedings could not be terminated by agreement. In reexaminations (inter partes) where the contesting parties settled their dispute, the challenging party would simply drop out of the inter partes reexamination, but the Office would continue with the reexamination in the interests of public policy.  (cf. terminating an inter partes patent reexamination by operation of estoppel).

Since accepting AIA trial petitions, the PTAB has encouraged settlements in many instances. Typically, panels inquire as to settlement possibilities during teleconferences with the parties. More recently, the PTAB is encouraging settlement by assigning a date on the Scheduling Order for an explicit ADR statement from the parties.
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Continue Reading PTAB & Alternative Dispute Resolution

April Webinar to Focus on Emerging Trends at The PTAB

It’s been a long time, been a long time,
Been a long lonely, lonely, lonely, lonely, lonely time. Yes it has.

Back from the dead….this month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday April 29th @12:30 (est). The April webinar…