Estoppel Reasonably Could Have Raised During Trial?

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

The ANPRM Proposals That Should Drop Out of the Process

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

ANPRNM Comments Due Today

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

Unnecessarily Ambitious

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

Panel Dependency Reinforces Bad Behaviors

As discussed last October, the Patent Trial & Appeal Board’s (PTAB) lack of consistency in addressing attorney misbehavior is a growing problem. Whether PTAB panels are busy attending to statutory deadlines on their docket, or turning a blind eye to procedural squabbles to better focus on the merits, the end result is that attorney misbehavior remains largely unchecked.

Attorneys that practice in district courts would never disregard applicable local rules. And district court judges that author such would not allow their rules to be ignored. While some PTAB judges take similar ownership of their forum, such APJs are increasingly few and far between. As a result, the “it doesn’t hurt to try” philosophy is becoming the de facto rule on many aspects of PTAB procedure. Continue Reading The PTAB Needs Procedural Consistency

Estoppel Future Uncertain

As pointed out last month, the SCOTUS has sought the Solicitor General’s input in Apple et al., v. California Institute of Technology. If the case is taken up, the Court will consider limiting the scope of IPR estoppel to art that was included in the petition, and that art which reasonably could have been raised “during the IPR.”

At present, “reasonably could have raised” is assessed at the time the petition is drafted (i.e., what could have been included in the petition), not what could have been included in the later trial (which is effectively nothing). While it is far from certain whether the Court will take the case — let alone narrow estoppel— petitioners might still consider their stipulation wording until this dispute is settled.Continue Reading Sotera Stipulations to Haunt PTAB Petitioners?

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

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?

New Internal Committee Structure to Appease Critics

Last week the PTAB announced a change to its internal handling of decisions. That is, while previously PTAB management reviewed certain decisions to ensure consistent treatment of relatively uncommon issues, that duty is now being passed to rank-and-file PTAB judges.

Why would anyone care about this (other than me), and why the change? Because the PTAB was plainly out-to-get innocent patent owners, that’s why!! Continue Reading PTAB Adjusts Internal Review Process