Online Form Will Simplify Request Procedure

To date, in order to submit an amicus brief in a PTAB case selected for Precedential Opinion Panel (POP) consideration, an interested party would either look to an Order from the Board in a subject case inviting such, or approach the Board/parties to communicate their request to the assigned panel. Today the Board introduced an online form to submit such requests directly to the agency. (here)

The Board obviously has an interest in simplifying procedures, but, of particular note here is the potential benefit of this interface to pending disputes over administrative law practices of the agency. Continue Reading PTAB Adds Online Interface for POP Related Amicus Requests

Webinars This Week on Post-Grant Patent Practice

A few interesting programs this week for those interested in a refresher on patent reexamination, or looking toward 2021 PTAB possibilities.

First, tomorrow (Tuesday) brings one of my favorite CLE programs of the year.   IAM’s IP 2020 (formerly Patent Law & Policy) kicks off tomorrow and runs through Thursday of this week. This program will explore litigation trends with a particular eye toward the political implications of the election and its impact on patent law policy.  A PTAB segment is offered on Thursday morning (9AM) that covers practice updates and developments. (register here)

Second, on Thursday afternoon Unified Patents presents — Reexaminations Reborn: Strategies for Filing Ex Parte Reexaminations.  The program will cover an overview of the ex parte reexamination process, strategies employed in successful filings, and look at the overall data behind reexaminations.  The program will also compare and contrast the benefits of PTAB challenges, and the role of patent reexamination in view of current and future developments. (register here)

Hope you can tune in to one of these informative events.

Simple Agency Fix Would Cure Optics Problem

In another week, the USPTO will close comments on its recently issued Request for Comments (RFC). As previously discussed, the RFC seeks public input on its discretionary practices under 314(a), including  serial and parallel petition practices, and what if anything the PTAB should do to refine its approaches.

When it comes to parallel petitions, the PTAB could easily eliminate upward of 80-90% of these filings with a simple tweak to its procedures. Continue Reading The Vast Majority of Parallel PTAB Petitions Are Easily Eliminated

RPX Data Disputes Bias Allegations

As I explained a few months back,  a due process challenge is pending at the CAFC that challenges the PTAB’s fee model.  New Vision Gaming v. SG Gaming Inc.  The argument, in a nutshell, is that because the fees for AIA trial proceedings include a separate component for the trial, and that collection of this fee makes up about 40% of the PTAB’s yearly budget, that this amounts to “a structural bias unlike any other in the federal executive branch.” (My take on that theory is found in the earlier post).

An amicus filing made in New Vision further alleges that the PTAB demonstrates a bias only in October? Continue Reading PTAB Institutional Bias Argument Assailed

CAFC Side Steps 314(a) Controversy on Procedural Grounds

As detailed back in September, there were separate attacks launched against the PTAB’s practice of denying AIA trial petitions in favor of advancing district court trial dockets. The first was a mandamus petition filed with the Federal Circuit challenging a particular IPR denial, the second an APA action filed by a number of large tech companies challenging the agency’s Fintiv practice as being in excess of its jurisdiction.

Last week, the Federal Circuit denied the mandamus, finding the matter barred from appeal in a straightforward opinion. Continue Reading Challenge to Fintiv Fails on Mandamus

November CLE – University of Texas & IAM IP2020

For those of you seeking CLE before the close of the calendar year, two upcoming (virtual) programs to consider:

First up, next Thursday and Friday (November 5-6th) the University of Texas will host its 25th Annual Advanced Patent Law Institute, which will be a live webcast this year. This program will cover an array of patent prosecution and litigation topics and includes segments on PTAB policy shifts, and practice strategies (register here)

Second, is one of my favorite CLE programs of the year.  November 17-19 brings IAM’s IP 2020 (formerly Patent Law & Policy). This program will explore litigation trends with a particular eye toward the political implications of the election and its impact on patent law policy. A PTAB segment will also be offered on the 18th that covers practice updates and developments. (register here)

Hope you can tune in to one of these informative events.

Agency to Consider Further Public Comment

Over the past few months, Congress has been asked to investigate the Patent Trial & Appeal Board’s (PTAB) practice of denying AIA trial petitions in view of competing litigations. On top of that, the agency has been sued for applying these allegedly unlawful practices, and there is a mandamus pending on the same issues at the Federal Circuit.

In parallel, the agency had been pursuing a draft rule set to codify many of these controversial practices….a swan song of sorts for the outgoing Director. This effort has been closely scrutinized by White House Office of Information & Regulatory Affairs (OIRA) at the behest of many stakeholders.  Given the public outcry, ongoing litigation, and feedback to White House Office of Information & Regulatory Affairs (OIRA), the agency has now taken a step back to seek further public comment on its planned rule changes.

Today the Dept of Commerce issues a Request for Comments from the public on these issues. But, responses are due within a month – What’s the rush? Continue Reading White House Pushes Back on PTAB Rule Making Effort

RPX Business Dealings With Salesforce Result in RPI Snafu

Earlier this month, the PTAB issued its remand decision in RPX Corp. v. Applications In Internet Time, LLC (here).  As a reminder, the Federal Circuit (pre-Thryv) instructed the PTAB to further analyze under a more “flexible approach” whether Salesforce was a real party-in-interest (RPI) to two RPX-filed IPR petitions.  On remand, the Board held that Salesforce was an RPI, and that the petitions at issue were therefore time-barred under § 315(b).

The outcome is hardly surprising given the bad facts of RPX, but has anything really changed for RPI/privy analyses? Continue Reading PTAB Bounces RPX on Unique RPI Relationships

Review of APJ Appointments to Be Considered by SCOTUS

Back in November of 2019 the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the Federal Circuit solution pronounced in Arthrex was effective to cure the Appointments Clause defect.  While there was some debate over whether the “fix” would hold, all of the witnesses were unanimous in that Congress, could, and should, fix the issue in the short term.

Today, Arthrex was granted cert.  I expect that Congress will now turn back to their earlier discussed legislative fix. Continue Reading Arthrex Cert Likely to Spur Previously Discussed Legislative Fix

Joinder Estoppel Narrower Than Original Petition Estoppel

Court’s have struggled with the meaning of the “reasonably could have raised” aspect of 315(e)(2) IPR estoppel. The CAFC has not had much opportunity to weigh in on this issue…. yet. But, last week the Court provided guidance on what is “reasonably raised” when a party joins an IPR petition under § 315(c).  Based on the Court’s decision, joinder may become a more attractive option for co-defendants in multi party litigations. Continue Reading PTAB Joinder Provides Estoppel Benefit