Texas Courts See Influx of Cases Against Retailers & Banks

Prior to the sun setting on the Covered Business Method (CBM) patent challenges this past September, the filings of such challenges with the PTAB had tailed off significantly. This led many to believe that the proceeding had outlived its usefulness.  However, a recent uptick in business method assertions (as I predicted would occur) seems to demonstrate that the mere existence of the CBM proceeding had a prophylactic impact on the assertion of business method patents. Continue Reading Business Method Patent Assertions Increase Without PTAB CBM Option

PTAB Team Expands to Include PTAB Judge in the Mechanical Arts

Just a quick shout out to welcome Phil Hoffman to the R&G PTAB team. Phil joins us from the PTAB after spending most of the last decade as an Administrative Patent Judge (APJ).  Phil presided over PTAB trials and ex parte appeals in the mechanical arts.  Prior to the PTAB, Phil was in private practice, including a stint as in-house counsel at General Electric. Phil has an extensive background in the mechanical arts, and a BS in mechanical engineering from Rensselaer Polytechnic Institute, and a law degree from the great GW Law.  Welcome Phil!

Legislative Fix Enacted for Trademarks

On March 1st, the Supreme Court will hear its fifth PTAB related case in United States v. Arthrex Inc.  At issue in this latest dispute is whether, for purposes of the Constitution’s appointments clause, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the president with the Senate’s advice and consent, or “inferior Officers” whose appointment Congress has permissibly vested in a department head. While this may sound like a boring legal debate for administrative law nerds (and it kinda is), there are some real world consequences for us super cool PTAB practitioners.

But, as made clear by a recent change to the Trademark statutes in the Trademark Monetization Act (TMA), it all may end in a fizzle for PTAB practitioners. Continue Reading Legislative Cure Provided for Potential Arthrex Deficiency

First Boardside Chat of the Year

This Thursday the Patent Trial & Appeal Board (PTAB) will offer its first Boardside Chat of 2021, from noon to 1 p.m. (EST).

Several administrative patent judges of the PTAB will cover:

  • Final rules related to institution of trials, including elimination of the presumption at institution that a genuine issue of material fact is viewed in the light most favorable to the petitioner;
  • Final rules concerning the burdens of persuasion in motions to amend;
  • New precedential decisions related to the application of the Fintiv factors and the need to conduct a real-party-in-interest analysis at institution; and
  • The indefiniteness standard to be applied by the Board in AIA trials.

Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Mike Tierney, and Lead Judge Kal Deshpande will present.

The webinar is free and open to all (access here). There will be a Q&A session at the end. Questions may be sent in advance (or during the webinar) to PTABBoardsideChat@uspto.gov.

Agency Left to Defend Unsettled Legacy

Upon taking the reins at the USPTO, Director Iancu made clear that he believed the Patent Trial & Appeal Board (PTAB) was cancelling too many patent claims in AIA trial proceedings.  Of course the PTAB was simply implementing the statutory framework given to it by Congress – and the Federal Circuit was largely affirming the PTAB’s work. So, the only possible “fix” for the Director was to rebalance the rules/practice to his liking (i.e., in favor of patent owners).

And he changed as much as he could, as fast as he could. Continue Reading Activist Director Moves On – What’s Next for the PTAB?

Litigators Amending Claims?

Patent prosecution bars are prophylactic provisions typically included in district court protective orders when there is a risk that a recipient of confidential technical information may use (inadvertently or otherwise) that information while prosecuting patent applications in related technology.  Prosecution bars eliminate this risk by preventing individuals who have access to technical information from directly or indirectly drafting, amending, advising, or otherwise affecting the scope of patent claims in a technical field related to the patents at issue.

Many prosecution bars are now written to cover PTAB proceedings, such as IPRs (since amendment is possible). However, whether district court litigators will be permitted to participate in PTAB proceedings may depend on the particular district where the subject patent is being litigated. Continue Reading Prosecution Bars & The PTAB – An Evolving District Court View

New PTAB Roadblocks & Strategies

Earlier this week I laid out my Top 5 PTAB cases of 2020 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like the practitioner list, my Top 5 PTAB developments of 2020 for District Court Litigators will focus on those practical PTAB developments that will impact parallel litigation practices outside of the agency.

In 2020, there were a number developments of interest to litigators, from litigation forums where a PTAB challenge is foreclosed or highly unlikely, to stipulations for avoiding PTAB discretionary denials, and new risks of collateral estoppel across a litigated portfolio. Continue Reading Top 5 PTAB Developments of 2020 for District Court Litigators

Director Memo Decides Against Standard of In Re Packard

Back in 2018 I noted the current PTO administration had backed away from a dispute on the appropriate 112 standard to apply in AIA trials (after intervention by the previous PTO administration). That is, the initial intervention sought to support the application of the standard enunciated by In re Packard to AIA trial proceedings.  After Director Iancu came on board, that Intervenor Brief was withdrawn.

Today, the PTO formally announced (via memorandum) that the Nautilus standard applies to AIA trials – settling an open question….at least for the time being.

Continue Reading PTAB Applies Nautilus 112 Standard to AIA Trials…For Now

2020: POP Precedents & Director Driven Changes

In 2020, the Board continued to expand 314(a) discretion through numerous Precedential Opinion Panel (POP) decisions. These decisions, among a number of other developments, demonstrated a clear interest on the part of the current Director to rebalance AIA trial proceedings in the direction of patent owners.  At the same time, the agency experienced increasing push back from larger innovator organizations — often subject to frivolous patent litigation— to rein in discretionary practices as it relates to favorite NPE venues. Rule packages attempting to codify 314(a) practices in a manner that would conform with the Administrative Procedure Act (APA) were killed, and lawsuits challenging the agency 314(a) practices were filed.  In the background (as seems to occur every year) a constitutional challenge to the PTAB’s very existence made its way to the SCOTUS.

Another exciting PTAB year in the books. But before closing the books on 2020, here are my Top 5 PTAB decisions/developments that changed the game for PTAB practitioners. Continue Reading Top 5 PTAB Decisions of 2020

Another Day, Another 314(a) Discussion

On the heels of its precedent of a week or so back, the PTAB is adding more to the swirling hairball known as the “Fintiv factors.”  First, the Board has clarified that agreeing to IPR estoppel proactively (before institution) and not pursuing such grounds in the parallel infringement proceeding, is a strong factor in favor of institution.

Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential as to § II.A) (here)

In addressing the Fintiv factors, Sotera explains that the petitioner’s broad stipulation not to pursue in district court any ground that it raised, or could have raised, in the inter partes review weighs strongly in favor of institution.  (I don’t see much downside to such a stipulation as you are far more likely to succeed at the PTAB on such grounds anyway.)

Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (Oct. 21, 2020) (precedential as to § II.A) (here)

Snap explains that a district court stay that would remain in place until an inter partes review final written decision weighs strongly in favor of institution.  (Of course, if the case is stayed I am not sure why the Fintiv factors would even be applied since there is no longer a fixed trial date or any efficiency consideration.)