Next Week’s CLE Agenda

For those seeking CLE this month, a number of great programs to consider in the coming weeks.

First up, the freebie 🙂

Next Tuesday, March 15th @ 1pm(EST) Gardella Grace presents the free one-hour webinar entitled In Possession of an Invention? Litigation Insights for Life Sciences Patent Drafting.  Presenters include patent prosecutor Dr. Patrick Halloran and litigators Cook Alciati and Michael Dorfman of Gardella Grace P.A.  The program will explore recent Federal Circuit decisions addressing the written description requirement in the life sciences field with an eye toward what the patent prosecutor can learn from contested proceedings addressing the written description requirement to stave off later litigation surprises.

Register (here) Login (here) – CLE Requested

Next, the non-freebies 🙁

Next Tuesday through Thursday, March 15th – 17th, the ever popular UTCLE Advanced Patent Law Institute returns as a webcast. The program will began at noon each day and adjourn at 4:25PM(EST).  The program will include a host of patent related topics on Tuesday and Wednesday, Thursday will provide PTAB specific panels on Thursday, finishing up in a CAFC panel that includes circuit court judges Linn, Chen and Stoll.

Register (here)

Also, this month, if you thought Comic-con was nerdy, you aint seen nothing yet!

The 2022 PTAB Bar Association Annual Meeting will be held March 23-25th – in person in Washington DC!  The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, recent developments and trends, policy considerations, and much more.  (People dressed as anime characters get in for free….try it).

Register (here)

High Value Disputes Spawning Wild-West Antics

I previously explained how Fintiv discretionary practices had spawned a new, cottage industry.  That is, with fully developed PTAB petitions being available to the public — denied only as a matter of discretion unique to the original filer— profiteers formed to simply refile such petitions.  The apparent goal being to leverage the publicly available petition materials where high-value verdicts had been subsequently secured on the subject patent.  With IPR institution leverage (or threat thereof) co-pending with a high-value verdict, this business model presumes that a patent owner would be open to a quick cash settlement.

One such profiteer, a company identifying itself as “Open Sky Industries,” recently leveraged early petition materials of Intel that pertained to its patent dispute with VLSI.  That dispute went to trial in the district court after Intel’s IPR petitions were denied under Fintiv.  At trial, a $2 billion+ verdict was entered.  Thereafter, Open Sky was successful in refiling Intel’s IPR materials, getting trials instituted on the subject patents with little to no cost or investment of its own.  The propriety of such re-filing practices is subject to an outstanding POP panel request.

If the optics of this practice weren’t bad enough for the PTAB….it has just gotten worse. Continue Reading PTAB Needs to Immediately Check Unethical Practices

Dispute Over Reexamination Vacatur Sent Back to VA Court

The recent trend of denying PTAB trial petitions on discretionary grounds has been argued to frustrate the purpose of the America Invents Act (AIA).  Indeed, patent reexamination filings — the clunky mechanism the AIA was supposed to supplant — surged by 60+% last year.  With stakeholders unhappy with how the PTAB is operating, interesting questions are being raised on when/how a reexamination remains viable after a failed AIA trial petition.

Last year, the Federal Circuit considered the timing of a Patent Owner 325(d) challenge to a follow-on reexamination after a failed IPR petition. This week, the Federal Circuit considered whether a petitioner that has been denied a reexamination can seek further review via an APA action of the district court. Continue Reading Reexamination Denial Subject to APA Judicial Review

Federal Circuit Overrules Previous Decision in Shaw Industries

Prior to the SCOTUS decision in SAS Institute, partial trial institutions were not uncommon.  Whether a proposed trial ground was found “redundant,” and excluded from trial, for example, created a strange estoppel calculus as to what “reasonably could have been raised” in that context.  That is, when a ground was raised, and was administratively barred from trial, how could estoppel be found as to that ground?

The short answer:  it wasn’t.  That was the decision of the Federal Circuit in Shaw Industries.

Since Shaw, partial institutions were barred by the Supreme Court in SAS Institute, which found all claims and grounds must move to trial if one claim is found reasonably likely to be found unpatentable.  Last week, the Federal Circuit finally had an opportunity to revisit Shaw. Continue Reading CAFC Clarifies IPR Estoppel Post-SAS Institute

Different Filing Dates Accorded to Petitions Filed on the Same Day

One of the more annoying aspects of PTAB practice is the variability in the agency’s issuance of Filing Date Notices.  In some cases, the Notice — an agency paralegal function — can come within a week or two of filing a petition (as it should), while in others, weeks later.  Since a Patent Owner’s Preliminary Response is due three months from the date of the Notice, different dates across related petitions can create a problematic misalignment in schedules.

Last week, the Federal Circuit considered whether 315(e)(1) estoppel can terminate one of two petitions filed on the same day, where one is decided earlier than the other as a simple result of a difference in schedules. Continue Reading PTAB Paralegal Delay Dooms Parallel Petition

Federal Circuit Reverses Newest Member

The concept of excluding the PTAB via a forum selection clause is not a new idea.  Back in 2019 I highlighted this option as the #1 development in PTAB practice for district court litigators.  Since that time, there have been a handful of cases that sought to leverage this mechanism. Earlier this week, the Federal Circuit was given another opportunity to explore this topic, and the potential policy consequences of such private agreements. Continue Reading Shutting Out the PTAB Via Private Agreement

Iancu Memorandum Withstands Appellate Scrutiny

Last summer, a guidance memo was issued to the Patent Trial & Appeal Board (PTAB) on the use of Applicant Admitted Prior Art (AAPA) in IPR proceedings.  The memo (here) concluded that an inter partes review (IPR) must be based on a prior art patent or printed publication, and that admissions regarding prior art in the challenged patent cannot serve as the basis for instituting an IPR.  But, the memo explained that such statements, may provide evidence of the general knowledge possessed by a person of ordinary skill in the art, and may be used to support an obviousness argument in conjunction with one or more prior art patents or printed publications.

So, AAPA can still be leveraged, just not as an actual prior art reference of a trial ground. Yesterday, the CAFC considered the subject of this memo and agreed with agency’s view. Continue Reading CAFC Endorses PTAB Treatment of Admitted Art

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Virtual CLE Program January 24 – 27th

IPWatchdog’s PTAB Masters 2022 (PTAB-palooza if you prefer), is coming next week!

The free, 4-day CLE program is virtual, and will focus on the PTAB from the viewpoint of both the patent owner and petitioners challenging patents.  Topics will explore political and legislative developments impacting the agency in addition to  important issues facing the PTAB.  From discretionary denials and parallel litigation, through PTAB trial tactics and strategies, this program will address the real world issues facing stakeholders by presenting best practices, expert insights, and master level planning.

Opening Remarks by Senator Tom Tillis, Keynote by former USPTO Director Andrei Iancu.

Full agenda (here) Program begins at 10:30AM(EST) Monday – Thursday (one hour break at 12 PM (EST ) and 2PM (EST) every day).

Register (here)

Amendment Based Estoppel at PTAB?

Remember the Doctrine of Equivalents (DOE)?

DOE was that folksy doctrine that allowed some wiggle room in proving patent infringement where a claim term was not literally met.  That is, DOE allows a patent owner to reach an equivalent claim element functioning in the same way, to achieve the same result that is utilized to side-step the literal claim language.  DOE is the type of legal argument that litigators live for.  Unfortunately, the doctrine was all but laid to rest decades ago in the Supreme Court’s Festo decision as most prosecution changes will foreclose DOE.  Still, there is an occasional throwback case that attempts to litigate DOE.

Most recently, Columbia University faced a summary judgment motion arguing that its DOE-based assertion was precluded by amendment based estoppel — as a result of PTAB claim cancellation alone. Continue Reading Cancelling Claims at the PTAB & The Doctrine of Equivalents

The Check is in the Mail!

Not much exciting going on at the PTAB until the new Director arrives in a few weeks.  But, there was at least one new POP decision that is worth mentioning.

In Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC the Precedential Opinion Panel (POP) held that payment for an AIA trial petition is effective when received by the Treasury.  I know, I know…try to contain your excitement. Continue Reading PTAB Finds Wire Payment Effective When Received by Treasury