“Without Prejudice” Dismissal of Earlier Complaint Does not Restart 315(b) Clock

As I predicted it would back in May, the Federal Circuit has now reversed the long-standing practice of the Patent Trial & Appeal Board (PTAB) to accept certain IPR petitions outside of the 1-year window of 35 U.S.C. § 315(b).  While 315(b) precludes petitions filed more than one year after service of a complaint of infringement for a subject patent, the Board had consistently held that where a first-filed complaint (outside the window) was dismissed without prejudice, that the one-year window would essentially reset.  In other words the PTAB adopted the legal principal that a voluntary dismissal of a complaint renders the earlier proceeding a nullity and leave the parties as if the action had never been brought.

In its en banc ruling today in Click-to-Call v. Ingenio (here), the Court reversed the Board’s longstanding practice. Continue Reading CAFC Reverses Long Standing PTAB Precedent on 1-Year Window

Is The Tide Turning for Patent Owners?

The Patent Trial & Appeal Board (PTAB) has issued an update to its Trial Practice Guide. The update includes notable practice changes that favor Patent Owners. Going forward, Patent Owners will have the last word in briefing, and at oral argument.  These changes, along with the imminent switch to a Phillips claim construction and increased feedback from the Federal Circuit are driving welcome changes at the PTAB for Patent Owners.

Please join me for an interactive webinar discussion of these changes next Monday, August 20th @1PM (EST). Register (here).  The webinar will identify key takeaways from these changes, especially for Bio/Pharma Patent Owners, and offer insights and discuss possible further practice changes that will occur in the weeks/months ahead.  My co-presenter for this webinar will be Charlotte Jacobsen, a partner in Ropes & Gray’s life sciences intellectual property litigation practice.

The formal portion of the webinar will begin at 1PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the free webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Trial Practice Guide Changes and Recalibrated PTAB Practice

This Tuesday @1pm(EST), the Practising Law Institute (PLI) will host the webcast entitled: Patent Owners and the PTAB – Is There a Light at the End of the Tunnel? The program will explore a host of recent developments, not the least of which is the recent changes to the PTAB Trial Practice Guide.

Other topics will include:

  • Impact of the switch to the Phillips claim construction practices
  • What has SAS Institute done for petitioners?
  • What has changed in RPI/Privy disputes?
  • Will amending get easier?
  • What other changes are expected in the months ahead?
  • Is legislation likely?

I hope you can join, me, and my co-panelist Rob Greene Sterne of Sterne, Kessler, Goldstein & Fox, P.L.L.C., for this timely discussion.

Patent Owner’s Given New Rights in Trial Practice Guide Update

The Federal Register will issue a notice updating the Patent Trial & Appeal Board (PTAB) Trial Practice Guide on Monday, August 13, 2018.  You can find a copy of this notice in the advanced reading room (here).  The update provides a number of changes to update the guide as to outdated material, but more importantly, provides significant, new benefits for Patent Owners. Continue Reading Patent Owners to Get Last Word at PTAB – Starting Now

Informative Decision Led to Confusion

Last month the Patent Trial & Appeal Board (PTAB) designated Ex Parte Jung 2016-008290, “informative.” An informative decision is one that expresses the “Board’s general consensus on recurring issues and guidance to examiners, appellants, patent owners, or petitioners in areas where parties routinely misapply the law.”

In Jung, the Board construed the claim terminology “at least one of A and B” to be conjunctive. That is, this language was determined to be properly construed (following the Federal Circuit precedent of SuperGuide Corp. v. DirecTV Enters., Inc.), as “at least one of A and at least one of B.”  However, the Board also noted that a patent’s claims, specification, or prosecution history may necessitate a broader meaning. Thus, in some scenarios, “at least one of A and B” is properly construed in the disjunctive as “at least one of A or B.”

Since being designated informative, however, Jung seems to have created confusion on whether or not the PTAB was making new law. Continue Reading PTAB De-Designates Ex Parte Jung as Informative Decision

CAFC Emphasizes Flexibility of its Printed Publication Jurisprudence

Last week, I pointed out that the Federal Circuit faulted the Patent Trial & Appeal Board (PTAB) for its narrow public accessibility analysis in Medtronic, Inc. v. Barry. Given the de novo review of printed publication status at the Federal Circuit, it is an issue that is frequently challenged on appeal.

Last Friday the Court took another opportunity to apply its multi-factor analysis to a printed publication dispute in GoPro Inc., v. Cointour IP Holdings, LLC.  In GoPro, the Court once again emphasized that focusing on a single factor (expertise of the audience) to the exclusion of others is reversible error. In reversing the Board’s decision in GoPro, the Court emphasized (here) that the reasonable diligence standard is applied to those skilled in the art. And that, proof of actual dissemination is not required, only that a person of skill could have located the publication with reasonable diligence.

In still another recent case, the Court explained that a commonly emphasized factor at the PTAB, indexing/searchability, is not a requirement to prove a printed publication publicly accessible. Continue Reading Publication Need not be Indexed/Searchable to be Prior Art

Public Accessibility: A Fact Intensive Inquiry

Yesterday I highlighted a significant decision for Patent Trial & Appeal Board (PTAB) practitioners pertaining to Real-Party-In-Interest (RPI) and privity determinations, Applications in Internet Time, LLC v. RPX Corporation. In Applications, the Federal Circuit faulted the Board for its narrow analysis of the facts, explaining that a more fact-intensive analysis was in order that takes into consideration the complete record. The Court’s rebuke of the PTAB’s RPI/Privy analyses reminded me of another significant Federal Circuit decision of the last few weeks that will recalibrate established PTAB practices.

In Medtronic, Inc. v. Barry the Court also faulted the Board for its narrow analysis of public accessibility. And, like its decision in Applications, directed the Board to perform a more fact intensive analysis of the entire record. Continue Reading Printed Publications & The PTAB

Recalibration of RPI/Privy Perspectives Post-WiFi

Prior to the Federal Circuit’s decision in WiFi One, real-party-in-interest/privy disputes in AIA trials were the sole province of the Patent Trial & Appeal Board (PTAB). Now that the softened appeal bar allows consideration of such disputes (especially as they relate to the one year window of 315(b)), the Court is recalibrating PTAB practices in this regard.

Earlier this month, the Court issued its decision in Applications in Internet Time, LLC v. RPX Corporation. The public version of that opinion was issued yesterday, explaining that the Board was unduly narrow in its RPI analysis. This is one of the more significant decisions on PTAB practice this year and will very likely reinvigorate RPI/privy disputes at the Board. Continue Reading PTAB Faulted for its Narrow RPI/Privy Analyses

Federal Circuit Denies Tribal Sovereign Immunity from PTAB Proceedings

Last Friday, the Federal Circuit affirmed the Patent Trial & Appeal Board’s (PTAB) denial of tribal sovereign immunity as a patent owner defense to an AIA trial challenge. The decision tracks my November prediction that the Court would follow its reasoning in Ultratec, Inc. v. Captioncall, LLC, 2017, (Fed. Cir. Aug. 28, 2017), which explained that PTAB proceedings were not “trials” in an Article III sense. You can find Friday’s decision in St. Regis Mohawk Tribe v Mylan Pharm., Inc. (here)

The Board noted that the question of state sovereign immunity was left for another day, but was it really? Continue Reading Tribal Sovereign Immunity Denied, Will State Immunity Hold at the PTAB?

PTAB Conferences Provide Unique Exchange with Stakeholders

While the summer months are relatively quiet when it comes to marquee CLE events and bar organization gatherings, the Patent Trial & Appeal Board (PTAB) is providing a rare opportunity for stakeholders in late July.

On the heels of its successful programs in Alexandria, Denver and Dallas, the PTAB brings its day-long Judicial Conference to San Jose, CA on Thursday, July 26th and Dallas, TX on Tuesday, July 31st

The Conference is designed to be interactive to enable information sharing (in small workshop-like settings) between judges and practitioners. Attendees will interface with sitting PTAB judges to explore common trial issues and thought processes. At least 25 judges will be in attendance at each conference, including Chief Judge David Ruschke.

In the AM section of the program, judges will discuss best practices for written and oral advocacy, and then attendees can hone their skills through workshop exercises conducted at tables and facilitated by PTAB judges.

In the PM section of the program, attendees can share their opinions on hot topics such as patent eligible subject matter and motions to amend during small group discussions led by PTAB judges to facilitate candid feedback and information exchange.

Finally, local IP leaders will interview Chief Judge David Ruschke to gain a better understanding of his views on recent PTAB developments, such as the proposed change to claim construction, practices, trial practices impacted by the recent decision in SAS Institute, etc.

Having attended the Alexandria stop, I found the program innovative. It offers a rare opportunity to interact with PTAB judges, and to discuss real-world PTAB dilemmas. I strongly recommend it.

The conference is free and open to the public, and advance registration is not needed.  Please see the PTAB Judicial Conference website for more details.