Patent Trial & Appeal Board

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Ending Opensky IPR Participation Underwhelming

Back in March, I explained that the Opensky mess needed to be immediately checked by the USPTO. The legitimacy of the PTAB is at stake when when profiteers are actively conspiring to abuse the IPR process by offering to deliberately file papers for an improper purposes. The situation called for swift and decisive correction…..but this is the federal government. So, we waited for a new Director to be appointed, and then, largely unnecessary amicus briefing for such a unique fact pattern.

Six months later (IPR is effectively done except for the Final Written Decision), we finally have a determination out of the Director. But, the outcome is far from satisfying for anyone that is hoping for the PTAB to start policing bad actors akin to an Article III Court.Continue Reading Its Time for the PTAB to Stop Playing Good Cop

Long Battle Ahead for Patentable Subject Matter Clarity

Remember the good ole days when every bar meeting had that Alice panel that said the same thing over and over? (i.e., “your guess is as good as mine”) And by good ole days, I mean the days when you skipped that panel and caught up on your emails back in your room. 🙂

Well, here we go again.

With American Axle failing to tempt the SCOTUS, the message has become clear….”Congress, this is your mess to fix.” So, we now embark on yet another adventure on sorting out the patent world’s biggest hairball – and that’s saying something!Continue Reading Tillis Bill’s Shot Across the Bow on 101

Judicial Conference & Congressional Attention Stir Change

This time last year, the Western District of Texas (WDTX) was getting a lot of attention from Washington DC policymakers. That is, a plaintiff’s ability to guarantee that its case would be heard by Judge Albright simply by filing in his Waco court was seen as “unseemly” and, coupled with the fact that his court had close to 30% of the nation’s patent docket, improper. Likewise, to many, the twenty or so successful mandamus filings reversing the Judge on issues of venue only amplified the urgency for legislative and/or judicial intervention.

Whether you agree with the above sentiment or not, it was clear as far back as last summer that these practices were plainly living on borrowed time. Back then, it was clear within DC policy circles that if the Judicial Conference did not step in and put an end to Judge Albright’s perceived monopoly on patent cases, that the legislators were prepared to take action.

Yesterday, the Chief Judge of the WDTX took action.Continue Reading WDTX Scatters Patent Docket – Now What?

In-Person Hearing are Back

This Thursday (Noon – 1PM(EST)), the next Patent Trial and Appeal Board (PTAB) Boardside Chat webinar will be conducted to discuss plans to re-establish in-person PTAB hearings and tips from judges for successfully arguing in different environments (connect here)

Topics and speakers for this event include:

  • In-person options for
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PTAB Reform Act of 2022

Back in September of 2021, the “Restoring the America Invents Act” was released by Senators Leahy (D-VT) and Cornyn (R-TX). The bill sought to reverse virtually every PTAB development of the Iancu administration. At the time, I outlined my thoughts on the various provisions, and predicted the most controversial—from a bio/pharma perspective— would serve as cannon fodder.

Last week, a revised bill reemerged entitled the “PTAB Reform Act of 2022.” The new bill, includes most of the content of the earlier bill with only issues of particular interest to bio/pharma left on the cutting room floor.Continue Reading Proposed PTAB Reforms Adjusted for Bio/Pharma

About Face Responsive to Mandamus Filing

I’ve pointed out a few times now that the IPR filings of OpenSky are inevitably doomed. There is just too much evidence of bad faith for there to be any other outcome. And as I also pointed, out the POP request has been pending since January, presumably awaiting the new Director to settle the issue. Today the POP Request was finally denied, strangely, in favor of a Director Review.

I know what you are thinking. “Wait a minute, there is Director Review of institution decisions? Since when!?”

Since a mandamus petition sent the agency scrambling to fix this constitutional infirmity.Continue Reading Director Review Now Possible For PTAB Institution Decisions?

CAFC OKs Interim Director Actions

The first Arthrex battle at the SCOTUS was an attempt to pull down the PTAB system based upon a violation of the Appointments Clause. That effort failed, and instead, the Court simply allowed for a principal officer, the Director, to review Final Written Decisions (FWDs). Then, when Director Iancu stepped down, the interim Director took over the Director Review functions. Arthrex II argued that this was substitution was improper as the interim Director was not a political appointee (i.e., Senate confirmed).

Neither of these disputes were of much interest to to me. In my view the first challenge was always going to end in some kind of remedy that would have little impact on PTAB practice, and the second, at best, was just going to end up with a new signature on the same Director Review decision.

So, it was not surprising when Arthrex II fizzled out last week.Continue Reading Arthrex II Fizzles