The USPTO published an Notice of Proposed Rulemaking (NPRM) today relating to internal procedures. The proposed rules set forth that the Director is not involved prior to issuance (of a PTAB Decision on Institution) in directing or otherwise influencing PTAB panel decisions. The proposed rules further provide that PTAB management
Last week, the PTAB published an updated Oral Hearing Guide (here) to reflect current agency practices. The changes include rather mundane clarifications on such topics as public access and demonstrative submission for ex parte hearings.
More interestingly, however, the agency highlights an all-virtual hearing “option” for America Invents Act (AIA) trials. But, in practice this option is more appropriately considered the new default.Continue Reading PTAB Default Should Be In-Person Trial Hearings
Back in April the Supreme Court approved changes to FRE 702 (Expert Witness Testimony) that will take effect on December 1st. These changes clarify that the preponderance of evidence standard controls the evaluation of expert testimony while also providing structural changes designed to refocus the trial court on admissibility.
Enhancing the gatekeeping function of the courts moves current practice away from erring on the side of admissibility. This also avoids fact finders needing to assign an appropriate weight where reliability is in question; such practices are especially confusing for juries.
But, what does the change to FRE 702 mean for declarant testimony at the PTAB? Continue Reading FRE 702 Amendment & The PTAB
A fundamental safeguard of the Administrative Procedure Act (APA) is the opportunity to be heard and to present evidence. Over the years the Federal Circuit has reminded the PTAB that parties must have notice of the agency’s positions and a meaningful opportunity to rebut such positions. The same opportunity must be provided for positions of opposing parties — as long as such positions are deemed timely.
Since the SCOTUS decision in SAS institute, which explained that the petition serves to “guide the life of the litigation,” the Board has considered positions expressed in a petition to be fixed. That is, if a patent owner raises a new claim construction mid-trial, the petitioner may not stray from its original positions (typically addressing a different construction) to rebut the new position of the patent owner. As can be appreciated there is a clear tension between the due process guarantees of the APA and a rigid application of the SCOTUS explanation in SAS.
Yesterday, the CAFC issued a precedential decision to clarify that there is at least some wiggle room for petitioners.Continue Reading CAFC Clarifies PTAB Trial Scope – Coming Practice Changes
As of Monday July 24th, the USPTO has discontinued the use of its Precedential-Opinion-Panel (POP) in favor of the interim Director Review (DR). This move was not unexpected as the POP panel (an early attempt to cure the Arthrex infirmity with partial Director oversight) was effectively replaced by the SCOTUS decision in Arthrex (Director Only).
In relying only on the DR moving forward, the PTAB has also decided to expand it to AIA institution decisions.Continue Reading PTAB Drops POP Panel Review Option
The PTAB’s next Boardside Chat webinar will be held this Thursday, July 20, from noon to 1 p.m. ET. The panel of APJs will discuss issues that typically arise during an America Invents Act (AIA) trial proceeding before the PTAB. The scheduled topics include filing of multiple petitions, discretionary denial, new
The challenge to the IPR estoppel statute in Apple et al., v. California Institute of Technology focused on the statute’s use of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding as stated in the statute.
While the Court passed on the question today, its reasoning could be in conflict with contrary Federal Circuit precedent.Continue Reading SCOTUS Passes on Scope of IPR Estoppel – Joinder Scope Remains Uncertain
Yesterday I highlighted the ANPRM proposals that are likely to make it into the NPRM this coming fall. Today, I’ll walk through the ones that I expect to be dropped, or at least heavily revised.
The vast majority of these “misfires” suffer from the same fatal deficiency — only Congress can provide for such modifications to the AIA. While the agency has substantive rule-making authority to implement the AIA, it does not have authority to implement regulations that effectively rewrite the AIA statutes themselves.
Given the push back from Congress on the apparent overreach of many of the ANPRM proposals, it is highly unlikely that the agency will carry such proposals forward to the NPRM. Continue Reading PTAB ANPRM – Misfires & Overextensions
Today is the comment deadline on the USPTO’s recent Advanced Notice of Proposed Rulemaking (ANPRM). To date some 10,000 comments have been submitted.
At first blush the volume may seem impressive. Turns out, however, that the overwhelming majority of comments appear to be from random individuals spamming the agency with automated form submissions. These submissions do not even address the specific proposals of the ANPRM and offer little background, insight, or analysis other than a paragraph or two of “PTAB bad.” Others in the same spam bucket offer an identical rule proposal — to make the PTAB an opt-in system. Of course, the agency has no power to overrule a statute with a conflicting regulation to allow for opt-in.
Once the agency navigates through less than helpful dross, we can expect an NPRM in the fall responding to the actual ANPRM comments. My guess would be after the close of FY 2023 in early/mid October.
But, what will the actual NPRM look like? Certainly nothing like the ANPRM.Continue Reading PTAB ANPRM Comments & Spoilers
Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long overdue. While these expected proposals were included in the sprawling Notice, the rule-making process will undoubtedly be bogged down by the remaining collection of controversial ideas and administrative over-reach.
Keep in mind that 314(a) Fintiv practices could soon be struck down as improper circumvention of APA rule-making. Stalling the issuance of those rules for at least another 12-18 months – if not longer – seems like a bad idea. My guess is political pressure from outside the agency led to the laundry list of additional proposals. Especially as they relate to for-profit entities in the wake of the Open Sky debacle.
Regardless, of how or why the expansive ANPRM came to be, I’ll walk through each proposal/idea in detail below (ANPRM here)Continue Reading PTAB Rule Ideas – The Good, The Bad, & The Ugly