Procedures

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CAFC Decision Moots Some POP Consideration in Hunting Titan Dispute

Last November, the PTAB ordered Precedential Opinion Panel (POP) review of the final written decision in  Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The rehearing request in Hunting Titan sought review of the Board’s denial of a Motion to Amend based upon an alleged sua sponte modification of a petitioner’s anticipation ground by the panel (here).  That is, the POP is reviewing the Board’s role in the amendment process where a petitioner either decides not to challenge an amended claim, or does so in a deficient manner that is apparent to the expert agency.

But the Federal Circuit has now weighed in on most aspects of this debate.
Continue Reading CAFC Finds “Little Sense” in Limiting the PTAB on Amended Claims

New Printed Publication Precedent/Informative Decisions

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

NHK Swallows General Plastic

The America Invents Act (AIA) was passed into law in 2011 to provide a more cost-effective, faster alternative to district court patent litigation.  At the time, bill sponsors explained that some of America’s largest innovators were paying more to their patent lawyers in a given year — to defend against “patent troll” suits— than they were on new research and development.  The role of the Eastern District of Texas (EDTX) in this perceived problem was not lost on legislators.  Provisions were added to the AIA to address perceived joinder abuses in the EDTX.  And, in many respects, EDTX plaintiff behaviors abruptly transformed the AIA from an esoteric, multi-year legislative debate, into law.

Of course, EDTX remains one of the most popular patent venues in the U.S. despite the AIA, and additional efforts to rein in this venue option in TC Heartland.  More recently, EDTX has inspired a copycat venue in the Western District of Texas (WDTX), which has seen a 700% increase in patent cases since 2016. The expansion in popularity of Texas district courts, especially for non-practicing entities (NPEs), makes the PTAB’s recent deference to such litigation under its NHK precedent all the more troubling given its AIA mandate.
Continue Reading Texas Plaintiffs More Likely to Side-Step PTAB?

Invalidity Counterclaims-In-Reply Will Not Trigger 35 U.S.C. § 315(a)

Congress created IPR to provide a “quick and cost effective alternative[ ] to litigation.”  To fulfill that role, Congress limited a party’s ability to seek an IPR after commencement of civil litigation in two ways: (1) under § 315(a), no IPR may be instituted if the challenger filed a civil action challenging the validity of a patent claim before filing the IPR petition, and (2) under § 315(b), an IPR may not be instituted on any petition filed more than one year after the petitioner (or a real party in interest or privy) was served with a patent infringement complaint.  These provisions are designed to control PTAB filings concurrent with civil complaints.

In a recent decision, the Northern District of California lamented that the statutory provisions permit a counterclaim of invalidity in a Reply. 315(a)(3). The Court interpreted such a counterclaim to be a “loophole.”
Continue Reading Declaratory Judgement Loophole at PTAB?

Most Patent/Trademark Prosecution Dates Extendible – Some PTAB

The United States Patent and Trademark Office (USPTO) today announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27.  Today’s announcement is in addition to earlier announced accommodations.
Continue Reading USPTO Offers 30 Day Extensions Under CARES Act

PTAB May Not Create a New Ground of its Own, But Can Rely on Additional Art in Support of a Petition Ground

Recently, the Federal Circuit in Philips v. Google (here) explained that the Patent Trial & Appeal Board (PTAB) may only institute trial on grounds presented in a trial petition. 948 F.3d 1330 (Fed. Cir. 2020).  That is, the Board may not formulate its own grounds from the petition art.  This is because the Supreme Court has explained the AIA statutes do not “contemplate a petition that asks the Director to initiate whatever kind of inter partes review he might choose.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).

But, as explained this week in Lone Star Silicon Innovations LLC v. Iancu (here), this prohibition against agency formulated grounds does not prevent the Board from looking to additional references for evidentiary support (such as general knowledge in the art) to support an existing trial ground.
Continue Reading New PTAB Ground or Just Supporting Evidence?

Extraordinary Situation May Extend Some Trial Schedules

Yesterday the USPTO issued guidance on the Coronavirus outbreak, explaining that it considered the effects of the Covid 19 pandemic to be an “extraordinary situation” within the meaning of 37 C.F.R.§ 1.183 and 37 C.F.R. 2.146 (trademarks).  The guidance waived revival fees for ex parte patent/trademark applications and patent reexamination matters that went abandoned as a result of missing a deadline.

The guidance did not address AIA Trial Proceedings.  The agency’s position that the pandemic is an “extraordinary situation,” however, is sure to result in party requests to extend 12-month PTAB trial schedules.
Continue Reading PTAB Trial Schedules & Covid 19

Director Determinations Cannot be Made by an AIA Trial Panel

Motion practice in AIA trial proceedings is typically limited to the handful of motions that may be filed as  a matter of right. (Pro hac, Joinder, Exclude, Amendment).  Prior authorization must be received from the assigned APJ panel to file any other motion.  Such authorization is usually pursued via a party teleconference with the Board.  To date, these teleconferences have been conducted as a motion hearing of sorts where the panel considers the merits of the requested relief before granting authorization to file.  In denying authorization to file, the Board essentially decides the merits of the requested motion.  Recently a non-precedential decision of the  Federal Circuit has frowned upon this practice, finding that Motions for Additional Discovery may be filed as a matter of right.

In a case yesterday, the Court again knocked the practice of deciding issues that have not been fully developed via motion practice.
Continue Reading CAFC Again Faults PTAB for Denial of Motion Practice

Thursday: AIA Hearings and Ex Parte PTAB Appeals

The Patent Trial and Appeal Board (PTAB) will host a Boardside Chat webinar this Thursday, August 22, from noon to 1 p.m. ET about hearings, including both ex parte appeal and AIA hearings. Chief Clerk Erica Swift and Deputy Clerk Kulunie Cannon will present. Topics will include…

Housekeeping Changes & Controlling “Pile On” Petitions

Tomorrow’s Federal Register will notice a second update to the America Invents Acts (AIA) Trial Practice Guide (here).  As practitioners know, this Guide provides additional guidance to practitioners concerning trial practice before the Patent Trial and Appeal Board (PTAB). (The first update came in August of 2018…