User Manuals & Corresponding Product Estoppel under 315(e)(2)

District courts continue to grapple with whether or not physical products described by prior art publications of an earlier Patent Trial & Appeal Board (PTAB) trial are subject to estoppel. That is, by virtue of utilizing product manuals in the earlier PTAB proceeding, whether the actual products described “were raised, or reasonably could have been raised” under 35 U.S.C. § 315(e)(2).

The view of some districts has been that it does not, unless the Patent Owner (estoppel proponent) demonstrates that the product described in the previously examined manual is technically superior to the manual teachings. Yet, other districts are adopting an absolute prohibition.. Continue Reading Physical Counterparts of PTAB Utilized Product Manuals Estopped in Some Districts

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 PTAB’s Hearings Guide (a little known document found here), new options for hearings, and recent updates to PTAB’s hearing rooms.

The webinar is free and open to all (access here). There will be a Q&A session at the end of the presentation.  Questions may be sent in advance or during the webinar to

Issue Joinder on the Way Out?

As discussed some months back, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) decided its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)  In this decision, the POP held that 35 U.S.C. § 315(c) provides discretion to allow a petitioner to be “joined” to a proceeding in which it is already a party, and provides discretion to allow joinder of new issues into an existing proceeding (here).

This practice, known as “issue joinder” is now before the Federal Circuit. And, the Court does not appear receptive to the agency’s statutory interpretation. Continue Reading CAFC Poised to Strike Down PTAB’s First POP Decision

Precedential Opinions & Trial Guide?

The Federal Circuit’s en banc opinion in In re Aqua Products was as massive as it was unfulfilling. This was due, in part, to the court’s struggle with how to weigh policy of the agency that was not based upon the traditional notice-and-comment rule making of the Administrative Procedure Act (APA). Given the significant hurdles in issuing such rules (especially under the Trump administration’s 2-for-1 cancellation requirements) it is certainly understandable that an increasing amount of the agency’s guidance on AIA trial practice is provided by way of precedential Board decisions, and such documents as the Trial Practice Guide.

Yet, when the public is held to standards that were not promulgated in accordance with traditional APA practices, the Federal Circuit is left to decide what if any deference should be applied to such policies. Continue Reading Precedential PTAB Opinions to Drive APA Challenges

New Decisions Provide Guidance on Discretionary Denials

The Patent Trial & Appeal Board (PTAB) has been steadily rolling out new precedent since establishing it Precedential Opinion Panel (POP). Last Friday a few more decisions were added to the growing pile. The newest decisions: two precedential and one informative serve to clarify 325(d) and 314(a) considerations, while the third informative decision warns against excessive and voluminous prior art presentations. Continue Reading PTAB Continues to Roll Out Precedent

Thursday Boardside Chat Webinar

The USPTO will host a Boardside Chat webinar on Thursday, August 8, from noon to 1PM (EST) to address recent updates made to the AIA Trial Practice Guide. Vice Chief Judges Mike Tierney and Tim Fink will present. Topics include:

    • Factors that may be considered by the Board in determining when additional discovery will be granted
    • Use of the Phillips claim construction standard
    • Submission of testimonial evidence with a patent owner preliminary response
    • Information to be provided by the parties if there are multiple petitions filed at or about the same time challenging the same patent
    • Motion to amend practice
    • Factors that may be considered by the Board in determining whether to grant a motion for joinder
    • Procedures to be followed when a case is remanded
    • Procedures for parties to request modifications to the default protective order

The webinar is free and open to all (register here). There will be a Q&A session at the end of the presentation,  questions may be sent in advance or during the webinar to

Takings Challenge to IPR Fails

Since the Supreme Court’s decision in Cuozzo Speed, there has been speculation that there may be an opportunity to attack AIA trials on different constitutional grounds. Most recently, it was argued that cancellation of an improvidently granted patent constituted a 5th Amendment “taking.”

In Celgene Corporation v. Peter, perhaps not surprisingly, the Federal Circuit held that “IPRs do not differ significantly enough from preexisting PTO mechanisms for reevaluating the validity of issued patents to constitute a Fifth Amendment taking.”

While IPRs do not differ significantly from reexamination in scope, CBM proceedings do.  Continue Reading Will a Takings Challenge to CBM Proceedings Succeed?

Article III Review of Agency Action May Once Again Interest SCOTUS

A perceived lack of Article III standing in appeals from the Patent Trial & Appeal Board (PTAB) to the Federal Circuit can doom an appeal. More recently, the Court has had an opportunity to explore “competitor standing” as a potential avenue for standing of close competitors. But, the Court has applied a patent-specific view to distinguish from controlling precedent on the impact of the “government action” of competitor standing.

A few weeks back in Gen. Elec. Co. v. United Techs. Corp., (hereinafter “GE”) the court made clear that for the competitor standing doctrine to apply, the government action must change the competitive landscape by, for example, creating new benefits to competitors. Building on its earlier decision in AVX Corp. v. Presidio Components, Inc., the Court found that the government action with respect to a unique property right like a patent, militates in favor of a narrower application of the precedent, drawing competing views from the Court.

This debate seems destined for cert petition.

Continue Reading Competitor Standing to Evolve for PTAB Appeals?

Longest Running PTAB Program in NYC 9/11/19

PLI’s flagship PTAB Trials 2019 is coming to New York City on Wednesday September 11th. The event will be broadcast via webinar if you can’t get to NYC in person. (register here)

PLI’s comprehensive program is the longest running and most widely attended PTAB-related CLE in existence. Rather than just exploring PTAB trial practices, this program has become known for its holistic analysis of the PTAB and its impact on the patent assertion landscape. Noted speakers this year include Chief PTAB Judge Scott Boalick, former CAFC Chief Judge Paul Michel, former CAFC Chief Judge Randall Rader, and former USPTO Director David Kappos.

This year’s program also adds a unique lunch discussion with Judge Rader and David Kappos on the state of the U.S. patent system (limited in-person availability), as well as in depth segment segment dedicated to licensing and monetization strategies. I am pleased to continue to chair this program alongside Robert Greene Sterne of the Sterne Kessler firm. (8.5 CLE credits are offered in most jurisdictions).

Hope to see you in September!

Boardside Chat to Review Orange Book/Biologics

The USPTO is hosting a Boardside Chat webinar on Thursday, July 18, from noon to 1 p.m. ET, to discuss its previous PTAB Orange Book patent/biologic patent study and district court pharma litigation study. Acting Vice Chief Judge Michelle Ankenbrand and Judge Jason Repko will discuss these studies.

The webinar is free and open to all. There will be a Q&A session at the end of the presentation, questions may be sent in advance or during the webinar to

Access the webinar (here).