Director Has Final Say…But Mostly More Busy Work

I’ve ignored the Arthrex decision for a few days, largely because it never really interested me (still doesn’t).  Of course, if you geek out over the severability doctrine, or the viewpoints of liberal versus conservative justices on the growing administrative state — have at it.  I just always saw it as an academic exercise that would have little impact on actual day-to-day PTAB practice.  As I predicted back in March, the SCOTUS result in Arthrex wasn’t exactly surprising.

While the Arthrex outcome will not change much in terms of PTAB strategy, there will be a beautiful mess in the short term. Continue Reading PTAB Rehearings After Arthrex?

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 States Patent and Trademark Office (USPTO), including current requirements for the patent bar and proposed administrative updates and comments received from the public. PTAB Supervisory Patent Attorney Steven Fulk will discuss pro hac vice admission before the PTAB.

There will be a Q&A session at the end.  Questions may be in advance or during the webinar to PTABBoardsideChat@uspto.gov.

Register (here)

Government Claims in Arthrex Catch Eye of House Judiciary

As we await the SCOTUS outcome in Arthrex, the Government Accountability Office (GAO) has been tasked with investigating the degree to which the Director might influence individual PTAB outcomes.  In a letter to the GAO from House Judiciary IP Subcommittee Chairman Hank Johnson (D-Ga.) and Ranking Member Darrell Issa (R-Calif.), it was pointed out that the U.S. government has argued in Arthrex  that APJs are inferior officers because they are “subject to significant oversight and control by the Director of the USPTO” who has the ability to “control[] which APJs decide which cases” and “provid[e] policy directives that APJs are obligated to follow.”

The letter (here) expressed a concern that the government has effectively indicated that “PTAB cases may have been decided based on factors outside of the evidentiary record and public legal authority,” which they argued “raises potential due process concerns and would be inconsistent with the intent of Congress in enacting the AIA.” While political appointees are expected to drive overall policy, of course, they are not expected to meddle in individual outcomes. Accordingly, the Subcommittee has tasked the GAO with investigating eight questions designed to explore the Director’s ability to influence individual PTAB decisions, and any instances where the Director has actually influenced the outcome of a decision. Continue Reading Congress Questions USPTO Director Input to PTAB Trial Outcomes

WDTX Losing its PTAB Mojo – Fintiv Outdated?

The Federal District for the Western District of Texas (WDTX) is a hotbed of patent litigation. Since 2016, the case load has increased some 700%, with a single federal judge (Hon. Alan Albright) now presiding over 20% of the nation’s patent litigation docket.  One of the primary attractions of the WDTX is its default schedule, which Judge Albright has highlighted should beat the PTAB’s competing trial timing.  Consequently, the vast majority of 314(a) discretionary denials at the PTAB involve WDTX cases.  That is, the PTAB has shown deference to the speed and investment of the WDTX when determining if it should exercise discretion to deny an AIA trial petition.

But recently, the PTAB has begun to look more closely at the actual investment the Court is making in cases.  As the Court issues patent decisions at a breakneck pace, the level of analysis and value to the public is now being questioned by the agency.  Meanwhile, others are asserting that the default schedule is increasingly implausible with upward of 20 trials being scheduled for a given date.

As the WDTX docket continues to expand, its limited bandwidth may be its undoing. Continue Reading WDTX “Implausible Schedule” & Cursory Markman Order Highlighted

Are Two Heads Better than One?

When faced with parallel PTAB and District Court/ITC proceedings, both patent owners and petitioners alike must decide whether to use the same expert in each proceeding, or hire a dedicated expert for each. Certainly there is much efficiency to be gained using the same person — not to mention the seeming likelihood of greater consistency in opinion.

But it is preferable, in my view, to use separate experts. This often limits document inventory for the PTAB deposition, and opposing counsel is less inclined to extend the deposition with questions that are designed to illicit fodder for the litigation effort. Likewise, use of separate experts does not give litigation counsel extra “shots” at the same witness.  Also, with the PTAB now applying the same Philips claim construction of the district court, as discussed previously, there is also an increased interest in claim construction related testimony should the PTAB proceeding fail.

Recently, the District of Delaware considered whether a litigation expert should have to divulge any consulting (non-testifying) work with respect to an earlier PTAB proceeding.

Continue Reading Using the Same Expert at the PTAB & District Court?

Is a Trade Secret Readily Ascertainable if it is in the Prior Art?

Since the passage of the Defend Trade Secret Protections Act (DTSA) in 2016, trade secret litigation has become more attractive. The DTSA provides a federal remedy in place of the scattershot approaches previously available under varying state laws. Often times, a trade secret claim will accompany a patent assertion.

More recently courts are beginning to consider the impact of a given trade secret being in the prior art, akin to patent validity analyses. Continue Reading Using the PTAB to Undermine an Alleged Trade Secret

Ex Parte Appeal Discussion

The next PTAB Boardside Chat webinar will be held Thursday May 13th, from noon to 1PM (EST), and will present a discussion on preparing an ex parte appeal brief. This program is intended for independent inventors, new practitioners, and those interested in learning more about the PTAB.

During the webinar, Vice Chief Judge Janet Gongola, Lead Judge James Worth, Judge Eric Jeschke, Judge Frances Ippolito, Judge Nina Medlock, and Acting IT Branch Chief Joy Weber will discuss:

A new tool (appeal template) to aid in preparing an appeal brief
General information about appealing examiner rejections to the PTAB
PTAB rules and procedures for appeal briefs
Common appellant mistakes

Access the webinar (here)

As always, there will be a Q&A session at the end. Questions may be sent in advance or during the webinar to PTABBoardsideChat@uspto.gov.

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?

Frequent Losing Argument at the PTAB Finds Rare Exception

A common losing argument at the PTAB is that a reference used in an obviousness combination is non-enabling.  The reason this argument fails is that a reference is prior art for all that it teaches.  But even this proposition has its exceptions.  For example, one would not expect a Dick Tracy comic from the 1930s showing a communicating wristwatch to somehow preclude patents on today’s smartwatches.

But where is the line drawn as to aspirational disclosures and, fair, prior art teachings?

Continue Reading Aspirational Prior Art Disclosures & Enablement

Free Program Spans April 19-22nd

For those seeking some PTAB-related CLE programming this spring, look no further than IPWatchdog.  The inaugural PTAB Masters™ program, will be presented by IPWatchdog® next week, April 19-22nd. Each day the webinar will provide a different PTAB related topic.  Tune in each day for 2-3 hours of interactive content.

I am pleased to chair this program together with Robert Greene Sterne.  The inaugural program will provide the patent owner perspective, and is aptly titled “Beating the PTAB.”  The program is designed to prepare patent owners for the challenges of monetizing patents by presenting best practices, expert insights, and master level planning. The program spans the universe of PTAB issues, from patent prosecution strategies to harden a portfolio prior to assertion, through PTAB trial and litigation tactics and strategies.

Keynote speakers for the several days of programming include former USPTO Director David Kappos; former Chief CAFC Judge Paul Michel; Senator Thom Tillis (R-NC); and recently departed USPTO Director, Andre Iancu.

(Register here)

I look forward to an action packed program and hope you can participate!