Arthrex Provides Little Strategic Value in the End

Today the PTAB issued interim guidance on adaptations to its rehearing practices.  The interim procedures allow for a rehearing to be filed to the Director, this option can even be pursued after a failed rehearing to the assigned PTAB panel.  So, good news for those parties seeking another path for delay. On the other hand, the Director is not going to change the outcome of cases beyond current practices (roughly 5% win rate on rehearing).

In essence, the Appointment’s Clause battle, much like the constitutional challenges to the PTAB posed in Oil States and Cuozzo, was a long road to nowhere.
Continue Reading PTAB Director Rehearing Adds Little

POPR Disclaimer Dooms Infringement

Some weeks back I explained the varied uses of Patent Trial & Appeal Board (PTAB) trial evidence in district court trial records. However, it is not necessary for a trial to occur for patent challengers to create litigation value. For example, often times a petition will apply prior art that operates in a similar fashion to the accused product.  In distinguishing that art, the Patent Owner is effectively arguing against infringement.

In such cases, a failed AIA trial petition (art distinguished) can result in ultimate victory on the ligation side.
Continue Reading When Losing is Winning at the PTAB

Does 315(b) Codify Party Notice or Patent Notice?

Last summer, the Federal Circuit reversed the Patent Trial & Appeal Board’s (PTAB) practice of accepting IPR petitions as timely filed under 35 U.S.C. § 315(b) where a complaint for infringement was served outside of the one-year window, but dismissed without prejudice. Click-to-Call v. Ingenio   In its reversal, the Court reasoned that “the appropriate question is whether the voluntary, without prejudice dismissal of a civil action in which a complaint had been served nullifies an administrative time bar that is triggered by service of that complaint. It does not.”  As a result, IPR proceedings before the Board that had been instituted under that previous 315(b) exception have been terminated.

Since Click-to-Call, the question has been raised whether the 315(b) bar is triggered by a complaint for infringement of a patent where there is a question as to the ultimate patent owner, which causes the suit to be dismissed without prejudice and re-filed.

I don’t expect the Federal Circuit’s answer to be any different.
Continue Reading PTAB Identifies New Exception to One-Year Time Bar

New Guidance for Statutory Bars, Foreign Depositions & Confidentiality

Earlier this week, the Patent Trial & Appeal Board (PTAB) designated several IPR decisions as “informative.” As a reminder, an “informative” opinion, while not binding PTAB authority, illustrates norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest.
Continue Reading PTAB Designates AIA Decisions Informative

2016: The Administrative Procedures Act (APA) Takes Center Stage

In re Cuozzo Speed Technologies was certainly a watershed moment for AIA trial practices. The 2016 decision settled years of seemingly endless debate on the propriety of the Patent Trial & Appeal Board’s (PTAB) claim construction rubric. By endorsing the Board’s use of the Broadest Reasonable Interpretation (BRI), the high court squelched a key rallying cry of PTAB critics and simultaneously reinforced the legitimacy of AIA trial proceedings. Yet, while the Cuozzo challenge to BRI was noteworthy in a broader sense, the BRI debate (no matter how it came down) was not expected to change AIA trial practices in significant regard.

Other notable 2016 events included PTAB rule changes allowing preliminary responses to offer new testimonial evidence.

But, for practitioners, the real impact in 2016 came from the Federal Circuit’s recalibration of AIA trial practices.  The Court repeatedly reinforced the mandates of the Administrative Procedures Act (APA) in assessing acceptable AIA trial practices. Thus, the top 5 PTAB decisions this year come not from the PTAB or the Supreme Court, nor from rule changes, but instead, the Federal Circuit.
Continue Reading Top 5 PTAB Trial Developments of 2016

Cuozzo Debate Moves Forward

Over the past week or so, the Petitioner’s opening brief and supporting amicus filings have been submitted to the Supreme Court in Cuozzo Speed v. Lee. (Filings linked below). Cuozzo once again tries to draw a distinction between “adjudicative” PTAB trial proceedings and “examinational” proceedings relative to amendment options. The

New Decision Explores 315(e)(1) Estoppel

Today, the Patent Trial and Appeal Board (PTAB) added the recent Decision on Institution rendered in Dell, Inc. v. Electronics and Telecomms. Res. Inst., IPR2015-00549 Decision Denying Institution, Paper 10, Mar. 26, 2015, to the list of Representative Orders, Decisions, and Notices on its web page. (here)

The decision, like many recent representative decisions is rather straightforward. In this decision, the Board held that the Petitioner is estopped under 35 U.S.C. § 315(e)(1) from requesting inter partes review because: (1) the Petitioner was the same petitioner as in a prior proceeding; (2) the patent and claims challenged in both cases are the same; and (3) the prior art raised in the second petition and in the prior proceeding are the same. (The petitioner used the same prior art in a different combination to allege obviousness of the claimed subject matter). The decision held that the art of the second filing not only “could have been raised” in the first filing, but , in fact, was raised.

As discussed during yesterday’s webinar, the application of the “could have raised” standard in the estoppel context is required by statute. On the other hand, applying the “could have raised” standard outside of 315(e)(1) situations, such as to a follow-on petition that is not subject to estoppel is becoming worrisome for many filers.

Continue Reading PTAB Considers “Could Have Been Raised” Estoppel

USPTO Explains Interim Policy After CLS Bank

Last week, Acting Deputy Director of the USPTO Michelle K. Lee appeared before the House Judiciary Committee. While largely an uneventful visit to report on agency progress, a few interesting questions were posed with regard to treatment of current patent applications under Alice Corp. v. CLS Bank. At the hearing, Director Lee was asked about reports that the USPTO was pulling allowances for a reassessment of claims under, CLS. (Back on June 25th the USPTO issued interim examination guidelines for assessing the statutory nature of patent claims in view of the landmark decision.)
Continue Reading PTO Yanks Allowances After CLS Bank

Technical Difficulties, Sorry for the Inconvenience

Now that has hit the 5 year mark, it was time to abandon our 2008 era platform. Please excuse the unnecessary email notifications that went out today, all should be sorted out by tomorrow. (Notifications are disabled for the time being, so please check back frequently, or switch