New Internal Committee Structure to Appease Critics

Last week the PTAB announced a change to its internal handling of decisions. That is, while previously PTAB management reviewed certain decisions to ensure consistent treatment of relatively uncommon issues, that duty is now being passed to rank-and-file PTAB judges.

Why would anyone care about this (other than me), and why the change? Because the PTAB was plainly out-to-get innocent patent owners, that’s why!!

Continue Reading PTAB Adjusts Internal Review Process
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Trial Dates & Backward Looking Stats Unreliable?

This past November, Senator Tillis has cautioned the agency that “it is difficult to imagine any plausible justification for the continued reliance on the demonstrably inaccurate trial dates set by the Waco Division.” Fintiv practices have remained unchanged since that time.

More recently, the WDTX had occasion to consider the competing schedule of another forum. Finding that the WDTX was faster, it looked to the realities of the other forum’s scheduling.

Continue Reading WDTX Looks at Average Time to Trial, Why Doesn’t the PTAB?

New Director to Review Hirshfeld Decisions?

Patent Owners that had the option to avail themselves of the new Director Review process under former interim Director Hirshfeld have been crying foul to the Federal Circuit. Their argument being that the Arthrex holding required a Senate confirmed Director Review, and that an interim Director (promoted from within) did not meet that criteria. Argument was heard a month or so back at the Federal Circuit on this issue.

Since that time, Senate confirmed Director Vidal has finally taken the wheel. Realizing this, the gov’t now hopes to pull the plug on these appeals.

Continue Reading More PTAB Arthrex Remands?

314(a) Practices Evolve

Discretionary denials of AIA trial petitions under 314(a) have fallen significantly over the past few months. But, Fintiv practices are not quite dead yet. As noted by IPWatchdog last week, although less frequent, occasional denials still occur.

Certainly the WDTX is no longer the silver bullet to the PTAB. That is, recent congressional inquiry asserting that its trail dates are suspect, has highlighted that the agency should expect to reach a decision before the Court. Yet, the agency should not expect petitioners to make that point in their filings.

Continue Reading PTAB Fintiv Practices Need Reality Check

CLE This Month

For those seeking some quality CLE this month, consider the second annual Patent Litigation Masters™ 2022 program, presented by IPWatchdog® this coming May 23rd-24th. The program is offered live at the Hyatt Regency (Dulles Airport). The two-day agenda offers a number of compelling topics, and as usual with the Watchdog Masters Programs, a stellar lineup of speakers.

The Litigation Masters program will focus on patent litigation in the United States, specifically from the perspective of the most active federal district courts in the country, the International Trade Commission (ITC), Patent Trial & Appeal Board (PTAB) and appeals to the United States Court of Appeals for the Federal Circuit. The program will also take a look at special issues of importance, including damages, patent eligibility, Standard Essential Patents, and injunctions. If it happens as a part of litigating patents in the U.S., we will cover it as a part of this program.

Hope to see you there!

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Tillis/Hirono Demand Answers on OpenSky

Barely on the job for a week, Director Vidal is already being politically pressured to address a festering issue of patent policy.   That issue—the use of a recycled IPR petition as a means to collaterally attack large damage verdicts— is a self-inflicted wound for the agency.  The OpenSky business model wouldn’t exist absent the ill conceived expansion of discretionary denial practices under former Director Iancu.

Senator Tillis (a vocal supporter of Director Iancu) sent a letter to the agency this past Wednesday demanding answers….gotta love politics. Continue Reading Senate Grows Impatient with PTAB

New Director Turns Attention to Rule Making

This past Friday, Director Vidal announced that the agency will be keeping the current interim Director review process that was put in place post-Arthrex.  The Director added that the process (or some variant thereof) will be formalized via Notice-and-Comment Rulemaking after collecting stakeholder input.  In the coming weeks, the agency intends to issue a Request for Comment (RFC) on the Director review process. In addition to providing more details on the Director review process (here), Director Vidal “strongly encourage[d] parties to provide a priority-ranked list of issues being raised.”

Issues that may warrant review by the Director include:

    • Issues that involve an intervening change in the law or USPTO procedures or guidance
    • Material errors of fact or law in the Patent Trial and Appeal Board (PTAB) decision
    • Matters that the PTAB misapprehended or overlooked
    • Novel issues of law or policy
    • Issues on which PTAB panel decisions are split
    • Issues of particular importance to the Office or patent community
    • Inconsistencies with Office procedures, guidance, or decisions

The agency is still not accepting Director Review filings for denied institutions, but a recently filed mandamus petition to the CAFC could change that practice 😉

To provide feedback prior to issuance of the RFC, email Director_Review_Suggestions@uspto.gov

Delaware To Become Less Popular for NPEs?

This past Monday, Chief Judge Connolly of D. Del issued a standing order for all pending litigation before him requiring disclosure of certain financial relationships from litigating parties.  The information is due 30 days from filing of an initial pleading, and includes arrangements made between parties and third party funders.

While eminently sensible in terms of identifying true decision makers for settlement purposes, or identifying potential conflicts of interest, the new requirements will surely send NPEs screaming into the night. Continue Reading Delaware Court Looks To Unmask Litigation Funders

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New Confirmation to Drive New Policy?

At long last, the Senate has finally confirmed Kathy Vidal as the new PTO Director….just in time to tender her resignation before the next administration!  Ok, maybe not quite that late.  But considering it can take close to two years for any Notice and Comment Rulemaking to get through the system, these appointment delays can seriously hamstring a Director’s ability to drive any significant policy change.

So, the new Director needs to hit the ground running.  And, as usual, the PTAB offers some early hurdles. Continue Reading Finally, a New PTO Director. Now What?

Federal Circuit Affirms Hunting Titan POP Decision

In Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The PTAB’s POP panel reviewed the denial of a Motion to Amend based upon a panel’s sua sponte modification of a petitioner’s proposed ground (here).  In reversing that determination, the POP found that such a sua sponte action should be a “rare circumstance.”  For example,  where there is a readily identifiable patentability concern apparent in the record.

At the time, I pointed out that when a petitioner presents a 103 ground that in reality is a 102 ground, I could not imagine how such a circumstance was not readily identifiable, and rare.  While seemingly agreeing with me, the Federal Circuit nonetheless affirmed the POP panel. Continue Reading No PTAB Duty to Separately Examine Amended Claims