Same Questions, Different Rubric?

Senator Patrick Leahy has now proposed draft legislation to add Obviousness-Type Double Patenting (OTDP) to IPR jurisdiction. The argument for adding this potential ground is that it is an important control to combat improperly extended drug monopolies (the justification underlying much of the legislative proposal).  Whether this provision makes it to law is far from clear given the likely push back from Bio/Pharma.

In the meantime, a Pharma dispute recently argued that OTDP is basically the same PTAB obviousness analysis under a different rubric.  An awkward argument given the coming storm. Continue Reading PTAB Estoppel & Double Patenting?

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Photo Boards, Unsplash
Bill Released – Iancu Era Rebuked

Well, the wait was not that long after all.  Senator Leahy -VT (D) (with co-sponsor Senator Cornyn – Tx (R)) has today released the draft bill entitled “Restoring the America Invents Act.”  The bill includes most of what I expected, with a handful of additional tweaks.

Below is a brief overview of all of the proposed changes. Continue Reading Restoring the America Invents Act – What You Need to Know

CAFC Cautions Against IPR Stay Considerations in Venue Dispute

A mandamus is considered an extraordinary remedy — especially in the venue context where district courts are accorded broad discretion.  Nevertheless, where a motion to transfer presents an indisputable right, mandamus is proper. Recently, the Federal Circuit has been uncharacteristically outspoken that the WDTX is doing it wrong.

The most recent WDTX mandamus on this issue, while unsuccessful, found the Federal Circuit once again pointing out improper analysis. Continue Reading Judge Albright Faulted for Considering IPR Stay Likelihood in NDCA

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?

Leahy Bill Seeks to Outlaw PTAB Fintiv Practice

As I predicted just this past Monday, Chair of the IP Sub-committee, today Senator Patrick Leahy proposed some noteworthy changes to PTAB practice. While a draft bill is yet to be released, as reported by IPLaw360, several high level goals of the forthcoming bill have been outlined. Continue Reading Senate Bill Proposes to Reset PTAB Practices

PTAB Master Class Tomorrow!

Tomorrow, the PTAB Bar Association will kick-off its annual conference. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, recent developments and trends, policy considerations, and more.  This year, we are in-person only!

The 3-day conference will cover agency developments, administrative law practices, and a host of PTAB specific strategies, and best practices. The program includes a Boot Camp segment for new practitioners, and a Master Class for more experienced practitioners. Other highlights include panel of administrative patent judges of the PTAB, as well as a segment on CAFC practices, including Judge Newman, Judge O’Malley and Judge Chen. (full agenda here)

I am pleased to be moderating the Master Class session on Wednesday, September 22nd. The Master Class is an innovative workshop program exploring complex and strategic decisions in AIA trial proceedings where there may be many “right” answers . . . depending on the facts. Veteran lawyers will discuss how they approach difficult situations to give their clients an edge, and PTAB judges will offer their insights and perspectives.

I hope to see you there!

AIA Revisited

With last week’s 10-year anniversary of the Leahy-Smith America Invents Act (AIA), and Senator Leahy still a powerful voice on the Senate Judiciary Committee, the timing may be right to refine the decade old statutes.  Indeed, over the past few months there have been a number of discussions inside the Beltway to consider potential updates.

While there will always be a small, vocal minority that would like to see the AIA go away entirely, it seems that only slight refinements to the existing statutes are on the foreseeable horizon. Continue Reading The AIA at 10 — Congress Considers a Tune Up?

The Return of In-Person IP Conferences

In the words of princess Elsa…for the first time in forever.…there are a number of in-person IP conferences slated for this fall. (I’ve been cooped up with kids, I make Frozen references now)

First up is IPWatchdog Live 2021 September 12-14 in Dallas, Texas. The multi-day IPWatchdog program includes an impressive roster of speakers and topics.  Kicking off the program on Sunday will be the Honorable Alan D. Albright of  U.S. District Court for the Western District of Texas. Monday and Tuesday will cover a host of IP related topics (agenda), including patent monetization, the PTAB, litigating in Texas, Patent Monetization, Trade Secrets at the ITC, SEPs, as well as Trademark & Copyright topics.

See you in Texas!

Court Holds Fact Finders May Compare Document Versions

Over the years, the Federal Circuit has faulted the PTAB for overly rigid printed publication analysis.  A recent Federal Circuit decision has provided further guidance on how the PTAB should determine what constitutes prior art in AIA trial proceedings, especially as it relates to the duties of a fact finder. Continue Reading PTAB Faulted on Rigid Printed Publication Analysis

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