IPWatchdog’s PTAB Masters 2022 (PTAB-palooza if you prefer), is coming next week!
The free, 4-day CLE program is virtual, and will focus on the PTAB from the viewpoint of both the patent owner and petitioners challenging patents. Topics will explore political and legislative developments impacting the agency in
Over the years, the Federal Circuit has faulted the PTAB for overly rigid printed publication analysis. A recent Federal Circuit decision has provided further guidance on how the PTAB should determine what constitutes prior art in AIA trial proceedings, especially as it relates to the duties of a fact finder.
Continue Reading PTAB Faulted on Rigid Printed Publication Analysis
Earlier this week, a guidance memo was issued to the Patent Trial & Appeal Board (PTAB) on the use of Applicant Admitted Prior Art (AAPA) in IPR proceedings. Much like the agency’s earlier 101 Guidelines on Patent Subject Matter Eligibility, the AAPA Guidance is more a pronouncement of the agency’s independent view of the law as opposed to more traditional implementation guidance on regulatory practices or new CAFC/SCOTUS jurisprudence. As we know from the Federal Circuit’s feedback on the 101 Guidelines, such independent pronouncements are given little weight outside the agency.
Nevertheless, it is at least helpful to practitioners to have a definitive answer on this issue given the years of PTAB panel variability. But, this guidance seems a bit short-sighted to my eye.
Continue Reading Admitted Art Ruled Out as IPR Trial Ground Reference
The United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking today to update its rules to conform to SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). That is, the rules now follow the holding of SAS to institute an AIA trial proceeding on all challenged claims should the petitioner meet its burden for at least one challenged claim. Additional include other rule based updates to codify practices introduced by changes to the Trial Practice Guide, such as providing for sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution.
None of the above rules change existing practices, but the USPTO did offer one notable wrinkle in its Federal Register Notice.
Continue Reading PTAB Proposes New Rule Package – and New Preliminary Proceeding Philosophy
Yesterday, the Patent Trial & Appeal Board (PTAB) designated one new precedential case, and four informative decisions directed to printed publication analyses.
The four informative decisions stem from AIA trial proceedings, and address common fact patterns in assessing public accessibility of a printed publication. Perhaps of most interest is the precedential decision, which outlines important distinctions between examinational and adjudicatory procedures before the agency.
Continue Reading PTAB Precedent Distinguishes Prima Facie Case from AIA Trial Practices
Over the years, the Patent Trial & Appeal Board had become panel dependent in assessing questions of public accessibility at institution. Some panels seemed to require a showing of a likelihood of public accessibility to move forward, while others required a more definitive showing. Last spring, the Precedential Opinion Panel (POP) took up this growing rift in institution standards in Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039. Specifically, the POP addressed the requirements for establishing that a reference qualifies as a printed publication at the time of institution.
In its now precedential decision, the Board found that a more flexible approach was needed at institution.
Continue Reading PTAB POP Recalibrates Institution Analysis for Public Accessibility
Last week, I pointed out that the Federal Circuit faulted the Patent Trial & Appeal Board (PTAB) for its narrow public accessibility analysis in Medtronic, Inc. v. Barry. Given the de novo review of printed publication status at the Federal Circuit, it is an issue that is frequently challenged on appeal.
Last Friday the Court took another opportunity to apply its multi-factor analysis to a printed publication dispute in GoPro Inc., v. Cointour IP Holdings, LLC. In GoPro, the Court once again emphasized that focusing on a single factor (expertise of the audience) to the exclusion of others is reversible error. In reversing the Board’s decision in GoPro, the Court emphasized (here) that the reasonable diligence standard is applied to those skilled in the art. And that, proof of actual dissemination is not required, only that a person of skill could have located the publication with reasonable diligence.
In still another recent case, the Court explained that a commonly emphasized factor at the PTAB, indexing/searchability, is not a requirement to prove a printed publication publicly accessible.
Continue Reading Publication Need not be Indexed/Searchable to be Prior Art