Public Policy Disfavors the Issuance of Unexamined Patent Claims

Last November, the PTAB ordered Precedential Opinion Panel (POP) review of the final written decision in  Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The rehearing request in Hunting sought review of the Board’s denial of a Motion to Amend based upon an alleged sua sponte modification of a petitioner’s anticipation ground by the panel (here).  That is, the POP is reviewing the Board’s role in the amendment process where a petitioner either decides not to challenge an amended claim, or does so in a deficient manner that is apparent to the expert agency.

Does the PTO owe a duty to the public from issuing amended claims that have not been adequately examined/reviewed for patentability? Continue Reading The PTAB’s Important Role in the Policing of Amended Patent Claims

Attorney Fees Available for Successful Defendant

As discussed back in September, district courts look to PTAB developments in assessing fee awards under 35 U.S.C. § 285. Recently the Eastern District of Michigan suggested that it could even find “exceptional” conduct at the PTAB as the sole basis for attorney fees.

Last week, the Southern District of California found that conduct substantially before the PTAB entitled a successful petitioner to attorney fees. Continue Reading Court Leverages PTAB Result in Awarding Attorney Fees

GE Argues CAFC Patent Exceptionalism

Back in July, I predicted that competitor standing in PTAB appeals was a debate destined for cert petition. That petition was filed last Wednesday in Gen. Elec. Co. v. United Techs. Corp. (“GE”)

As a reminder, in GE the Federal Circuit held that for the competitor standing doctrine to apply in appeals from the PTAB, the government action must change the competitive landscape by, for example, creating new benefits to competitors (citing its earlier decision in AVX Corp. v. Presidio Components, Inc.).  The Court further explained that the government action with respect to a unique property right like a patent, militates in favor of a narrower application of the precedent. The holding in GE drew a concurrence from Judge Hughes (as bound by precedent), which explained his differing views on the Court’s competitor standing jurisprudence.

GE has pressed the views of Judge Hughes in its cert petition. Continue Reading Competitor Standing in PTAB Appeals Pursued to SCOTUS

CAFC Implies PTO Might Overlook Some 112 Issues

The Patent Trial & Appeal Board (PTAB) does not accept trial grounds under 35 U.S.C § 112 in Inter Partes Review.  This is because the IPR statutes only authorize trial grounds based on patents and printed publications.  The same has been true of patent reexamination for decades.

Last week, in Samsung Elec. Am., Inc. v. Prisua Eng’g Corp., the Federal Circuit considered whether the Board may cancel claims under 112 when such issues arise during trial.  The Court held that the PTAB may not cancel claims under 112, but instead, might, for certain types of claims, proceed to decide the prior art grounds. Continue Reading Should the PTAB Determine Patentability of Unsupported Means-Plus-Function Claims?

Discretionary Consideration Bars ReturnMail Side-Step Via Intervenor

Last fall, I explained that the Patent Trial & Appeal Board (PTAB) was considering the relationship of government contractors in Court of Federal Claim (COFC) patent disputes against the U.S. government.  That is, given the typical existence of a contract between the government and the contractor, what such a relationship meant for RPI/privy determinations.

Perhaps not surprisingly, the PTAB has found privity to exist between the government and its contractors in common contractual scenarios. For example, where the contractor intervenes in the COFC matter. And that the later AIA petition of the contractor (outside the 315(b) window of the government) is barred.

Perhaps more surprisingly, however, is the discretionary consideration under 314(a) relative to ReturnMail that would effectively close the PTAB to patent disputes at the COFC. Continue Reading PTAB Closed to Court of Federal Claims Matters?

CAFC Holds Petitioner to PTAB Choice

While we await the en banc determination in Arthrex/Polaris, there have been a number of recent remands back to the PTAB (i.e., where the Appointments Clause issue was first raised in the opening appellate brief). Given this, it may be that the Federal Circuit remains unimpressed with the government’s argument that failure to raise the issue before the PTAB results in forfeiture of the argument.  Still, given the supplemental briefing in Polaris as to the sufficiency of the Arthrex remedy, I am still expecting that at least this aspect of the debate is taken up en banc.

In the meantime, the Federal Circuit has made clear that the Appointments Clause issue will not benefit failed PTAB petitioners.

Continue Reading No Arthrex Relief for Failed PTAB Petitioners

Reexamination/Reissue, PTAB Bar, & IPWatchdog Con2020

A few CLE programs on the horizon, including the PTAB Bar Association annual meeting and the inaugural IPWatchdog Con!

First, this Tuesday at 1PM (EST) Stafford Legal presents the webinar: Patent Reexamination and Patent Reissue as Litigation Tools – Insulating Your Patent Portfolio From New Threats. This program will explore the current post-grant/patent litigation landscape with an eye toward emerging trends and challenges facing patent owners and challengers alike. Best practices for utilizing patent reissue/reexamination will be explored, along with potential pitfalls and nuances of these unique mechanisms.

Coming up in March, there are a number of exciting conferences.

First, the 2020 PTAB Bar Association Annual Conference will come to DC the Ritz-Carlton in Washington, D.C., on March 10-13th. Pre-conference sessions will be offered March 10th. I’m honored to once again moderate the PTAB Master Class.  

You can view the full agenda and session descriptions (here).

Later in March is IPWatchdog Con2020 arrives in Dallas Texas March 15-18th. This multi-day conference will cover the entirety of the IP landscape, including licensing, ethics, funding, prosecution.  I’m especially looking forward to this one, hope to see you there.

District of Delaware Considers Physical Products & Redundant Publications

Back in August, I pointed out that 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 315(e)(2) estoppel. That is, by virtue of utilizing a product manual in the earlier PTAB proceeding, whether the actual products corresponding to such a manual can be considered “raised, or reasonably could have been raised” under 35 U.S.C. § 315(e)(2).

The view of some districts has been that since physical products can’t be raised at the PTAB, such evidence is simply outside the scope of estoppel.  Others take a narrower view, weighing the potential technical superiority of the physical product to the previously used publication.  In another twist on this fact pattern, the District of Delaware recently considered whether the underlying evidence of these disputes should be the focus at all. Continue Reading PTAB Estoppel: Grounds vs. Evidence

Arthrex Argument Being Added to Briefs

As detailed back in December, the government has sought en banc rehearing in Arthrex. In its petition, the government revisited the bases for the Court’s October decision and encouraged the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency).

In its Reply of last week, the government once again focuses on forfeiture, arguing that raising an Appointments Clause issue on appeal is too late.  To emphasize the issue, the Reply lists all of the newly filed appeals raising the issue for the first time. Continue Reading Gov’t Warns CAFC Over Growing Arthrex Docket

Adding New Blood into the Estoppel Mix

IPR estoppel under 35 U.S.C. § 315(e)(2) provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added).  As pointed out previously, a growing number of district courts have construed the phrase the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) to define grounds that a party could have included in its petition, but did not.

Assuming a failed petitioner can locate a piece of prior art that it could not have raised earlier (and make the appropriate showing to avoid estoppel) are combinations with failed art of the IPR precluded? Continue Reading Rehabilitating Failed PTAB Art