Virtual CLE Program January 24 – 27th

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

New Mechanism Produces Rare Win

Earlier this week, the PTAB issued a rare win for a patent owner in an Director Rehearing.  The Rehearing option, provided after the SCOTUS decision in Arthrex, enables a party to request the Director of the USPTO review the record prior to appeal to the Federal Circuit. To date, this option has not been any more successful than a typical panel rehearing request (not surprisingly).  This week’s decision may shed some light on the type of issues that may catch the Director’s eye.
Continue Reading PTAB Grants Director Rehearing Request

Board Considers Propriety of Deposition Exhibits in Sur-Reply

As a reminder, a Patent Owner Sur-Reply may only be accompanied by the last deposition transcript – no other exhibits. 37 C.F.R. § 42.23(b)  Recently, the Board has considered the propriety of additional sur-reply exhibits that were introduced at deposition. That is, if not policed, the last deposition might present an opportunity to “back-door” additional exhibits to circumvent the rule.

The Board’s view of this practice may depend upon the exhibit.
Continue Reading Deposition Exhibits in Your PTAB Sur-Reply?

CAFC Says “No”…Ninth Circuit Says “Yes”

Under 35 U.S.C. § 285, a prevailing party in a patent infringement dispute may be awarded reasonable attorney fees in “exceptional cases.” I’ve previously discussed the contours of what constitutes an “exceptional” case based upon earlier cases. In 2018, the Central District of California awarded attorney’s fees stemming from a parallel PTAB proceeding, and in 2019 a Michigan court held that conduct at the PTAB may even be permissible as being the sole basis for fees in parallel district court proceedings. Most recently, however, based upon the guidance of the Federal Circuit, 285 has not been extended to attorney fees incurred during a PTAB proceeding.
Continue Reading Circuits Split on PTAB Fees Being Recoverable Under 285

Settlement Prior to Trial Institution May Not Require Filing of Settlement Documents

Back in 2015, I pointed out that an opinion of the Federal Circuit called into question the PTAB’s practice of requiring settlement documents to terminate an AIA trial preliminary proceeding. I reasoned that as the Federal Circuit interpreted “proceeding” as written in the AIA statutes as not including a preliminary proceeding in Intellectual Ventures II LLC v. JPMorgan Chase & Co. (here), that this statutory construction could impact pre-institution, settlement procedures.

All these years later, the Board has now been asked to consider the issue.
Continue Reading PTAB Changes Settlement Requirements?

Director Adopts Panel Opinion

A few weeks back, I explained that the new Arthrex rehearing option— to the Director of the USPTO —was a non-event for practitioners. Reason being, the Director cannot just unilaterally reverse decisions “just because” he/she likes or dislikes patents.  Of course, any such decision would be reviewable on appeal by the Federal Circuit.

While I was initially concerned with such filings piling up during the tenure of an Acting Director, the Acting Director is able to perform these duties (and issue patents) for a limited period of time while a politically appointed Director is seated.  At least for now, that is how such rehearings will be decided.

Yesterday, the Acting Director issued his first two decisions, adopting the panel decisions in each as the final decision of the agency.
Continue Reading Director Rehearing Decisions: No Path for Delay

OED to Explain PTAB Admission Practice Thursday

This Thursday, June 17th, from noon to 1 p.m. ET, the PTAB’s Boardside chat webinar will explore the mechanics of admission to practice before the Patent Trial and Appeal Board (PTAB).

Office of Enrollment and Discipline (OED) Attorney Kimberly Weinreich will discuss admission to practice before the United

Previous Testimony May Highlight Infringement

When a failed PTAB petitioner heads back to court, Patent Owners sometimes seek to leverage the broad claim reads proposed at the PTAB to demonstrate infringement. Recently, in ChanBond, LLC v. Atlantic Broadband Group, LLC, et al., (D.DE., Apr. 19, 2021), the district court considered the admissibility of previous IPR testimony to an infringement case.
Continue Reading Can Previous IPR Testimony Come Back to Haunt a Failed Petitioner?

Webinar to Discuss Motions at the PTAB

This Thursday March 18th, from noon to 1PM (EST), the PTAB will conduct a Boardside chat to discuss motions practice in PTAB trial proceedings.

Judges Erica Franklin and Eric Jeschke will present an overview of requirements for PTAB trial motions in general and provide a review of

Boardside Chat Focuses on Multiple Petition Outcomes

This coming Thursday, December 10th, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) will offer its next Boardside Chat Webinar to discuss several aspects of PTAB trial proceedings.

Lead Judge Bill Saindon will present the results of the PTAB’s recently updated multiple petitions