AIPLA Bench & Bar/IPWatchdog Con2020

A few virtual CLE programs on the horizon, including AIPLA’s PTAB Bench & Bar Conference, and the inaugural IPWatchdog Con!

First up, AIPLA’s VIRTUAL PTAB Bench & Bar Conference will be held on August 20th from 3-6PM (EST). This program provides two sessions on Trial Proceedings before the PTAB, and the opportunity to discuss current issues with fellow practitioners and USPTO personnel in small break out sessions. The traditional sessions will explore Discretionary Denials: What Petitioners and Patent Owners Need to Know; and Practice Tips For Effective Briefing/Evidence At Each Stage of the Trial.  Register (here)

Second, the inaugural, and also entirely virtual, IPWatchdog Con2020 will run from September 1-30, 2020. Previously scheduled as a 3-day live event, the pandemic has forced the program into a topic or two, per day, over the full month of September (It’s a virtual mardi gras of IP law!) This program covers far more than just the PTAB, including the full spectrum of issues facing innovators, creators and brand owners. Register (here)

Looking forward to both of these innovative programs.

AIA Trial Fees Increasing + New Pro Hac Fee

The United States Patent and Trademark Office (USPTO) is increasing Patent and Patent Trial and Appeal Board (PTAB) fees for a second time in three years.  The new fees schedule, effective October 2, 2020, incudes a new fee for non-registered practitioners to appear before the PTAB pro hac vice.  Patent reexamination and reissue fees will increase by roughly 5%. ) Continue Reading PTAB Trial Fees Increase 25% in October

CAFC Refuses Remand on 112 6th Deficiencies

When challenging claims at the Patent Trial & Appeal Board (PTAB), Rule 42.104(b)(3) requires a Petitioner to identify the specific portions of a challenged patent’s specification that describe the structure corresponding to a claim’s means-plus-function claim feature.  Of course, if a petitioner fails to do so, the Board will reject Petitioner’s challenge for failing to comply with the Rule.  To the frustration of petitioners, however, where that failure is based upon the shortcomings of the challenged patent itself, the PTAB is  precluded from officially making such an indefiniteness determination.  Instead, the Board will simply conclude that the rule has not been satisfied.

A week back, the Federal Circuit reiterated this shortcoming of the IPR statutes. Continue Reading PTAB Can’t Find Means-Plus-Function Claims Defective

Delaware Cases Slipping 4-6 Months

The practice of denying AIA trial petitions in view of competing district court trial dates has brought some negative attention to the Patent Trial & Appeal Board (PTAB) over the past few months. At the same time, patent litigation has increased over the first two quarters of the year by 20%.  This surge has been greatly aided by the exploding popularity of the Western District of Texas (WDTX) with non-practicing entities — a district that the PTAB is increasingly deferring to in its discretionary denials based upon competing trial dates.

While Patent Owners are quick to point to a looming district court trial date as being set in stone, in reality, these dates are often reset once the PTAB hurdle is cleared. Continue Reading District Court Trial Dates Tend to Slip After PTAB Discretionary Denials

CAFC Holds IPR Claim Amendments Subject To Full Patentability Examination

Yesterday, a divided CAFC panel held in Uniloc 2017 LLC v. Hulu, LLC (here) that during an IPR proceeding, the Board may consider any patentability challenge—including subject matter eligibility—if the Patent Owner moves to amend its claims under § 316(d).  The Court continues to emphasize the agency’s duty to the public in assessing patentability of the patent claims it issues. Continue Reading 101 is Fair Game for Assessing PTAB Amendments

Settlement by Amendment Scenario Thwarted in PTAB Rehearing Reversal

Last March, I explained the strange scenario playing out in ZTE USA Inc., & LG Electronics Inc. v. Cywee Group LTD. (IPR2019-00143).  In ZTE, the original petitioner was joined upon institution by a second petitioner.  As is often the case, the joined petitioners were competitors.  (A joined petitioner takes an understudy role in AIA trial proceedings, absent a settlement between the original petitioner and the patent owner).

Rather than settle, the original petitioner in ZTE decided not to oppose the Patent Owner’s amended claims, or for that matter, even request oral argument.  And, given that the original petitioner was at least still present in the proceeding, the PTAB refused to allow the second petitioner to step in and oppose the amended claims. My previous post pointed out that this was bad policy that could lead to anticompetitive behavior in joinder scenarios.

Last Friday, the PTAB reconsidered its initial decision, and in the wake of Hunting Titan, reversed its earlier decision to allow the amendment opposition of the second petitioner. Continue Reading PTAB Allows Joined Party to Oppose Amendment in Place of Original Petitioner

Roughly 10% of AIA Proceedings Involve Amendments

Earlier this week the Patent Trial & Appeal Board (PTAB) released the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.  Not surprisingly, this installment doesn’t look much different than previous ones.  Amendment remains unpopular at the Board for strategic reasons, and those Patent Owners that do attempt amendment are rarely successful.

While the 6th installment preview early results on the Amendment Pilot, it does not present success rates (which to date, are no better then the old program – also, not a surprise). While there was an initial flurry of Patent Owners opting for the Pilot program, that initial amendment popularity has waned. Continue Reading PTAB Amendment Study Shows More of the Same

New Informative Decisions Applying Fintiv Factors

Today, the Patent Trial & Appeal Bord designated two decisions informative that apply the so-called “Fintiv factors.”

Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020) (informative)

This decision denies institution upon applying the factors set forth in the precedential Order of the same dispute,  Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (the “Fintiv factors”) when the trial is scheduled to begin two months before the due date for the final written decision, the district court has invested in the validity issues, there is a substantial overlap in the patentability challenges, and the petition is not strong on the merits.

Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020) (informative)

This decision institutes an inter partes review (IPR) upon applying the Fintiv factors when it is uncertain whether the trial will take place before the final written decision, the district court has not made a significant investment in the validity issues, the petitioner stipulated not to raise in the district court the same patentability grounds raised in the IPR, and the petition is strong on the merits.

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New Pilot Will Not Accelerate Post-Grant Matters

Last week the United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The program, entitled “Fast-Track Appeals Pilot Program” launched July 2, 2020. (here)

But, the program may not benefit all appellants.  And it is important to understand that the program is not offering an appeal timeline (start to finish) that spans 6 months. Continue Reading PTAB Fast-Track…Not So Fast