SCOTUS to Recalibrate Appeal Bar

Earlier this week the SCOTUS heard arguments in Dex Media Inc. v. Click-To-Call Technologies, LP. As a reminder, the issue presented was the scope of the appeal bar of 35 U.S.C. § 314(d) for AIA Trial Proceedings.  More particularly, whether disputed violations of 35 U.S.C. § 315(b) are barred from appeal.

The court initially addressed the appeal bar in Cuozzo, commenting that the appeal bar would not preclude all appeals, such as “shenanigans” where the agency exceeds its statutory bounds. The Court addressed the bar again, Continue Reading PTAB Appeal Bar Likely to Be Tightened

PTAB CLE Programs This Week

All you want for Xmas is PTAB CLE, admit it!  Lucky for you there are two programs  to choose from this week.

First up, tomorrow brings PLI’s one-hour briefing entitled: Arthrex/Polaris – The Evolving Impact of the PTAB Appointments Clause Debate. As the title makes clear, this program will address the evolving developments in the Appointments Clause saga, the impact on stakeholders and possible resolutions.

But, wait! There’s more!

On Thursday, don’t forget Stafford Legal’s Using PTAB Proceedings to Challenge and Defend Patents: Standing, Serial IPRs, and Unintended Consequences. This program will explore the impact of PTAB proceedings on Patent Owners, and evolving practices at the agency in 2019.

Act now while supplies last!

Motion to Amend Practice

For those interested in motion to amend practice in AIA trials, the Patent Trial & Appeal Board (PTAB) will be conducting a webinar on the topic this Wednesday, December 4th from noon to 1PM (EST) (here)

Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will address a recent notice of proposed rulemaking on the burden of persuasion in motion to amend practice; the status of the motion to amend pilot program; and use of reexam proceedings and reissue applications as an alternative way to secure amended claims.

The webinar is free and open to all. There will be a Q&A session at the end, questions may be sent in advance or during the webinar to

Overview for Those New to AIA Trials

The Patent Trial & Appeal Board (PTAB) will conduct a Boardside Chat today from noon to 1PM (EST) for those wanting to learn AIA Trial basics.  Lead Judge James Worth and Judge Alyssa Finamore will walk through the AIA trial process and explain each step in detail. Access (here)

The webinar is free and open to the public. There will be a Q&A session with the judges at the end of the presentation, questions may be sent in advance or during the webinar to

Unanimous Support for Legislative Fix

Today, 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 current Federal Circuit solution was effective in curing the Appointments Clause defect, while there was some debate over whether the “fix” would hold, all of today’s witnesses were unanimous in that Congress, could, and should, fix the issue in the short term. Continue Reading House Judiciary Told Legislative Fix to Arthrex Defect is Necessary

Government Intervenes to Thwart Arthrex Remands

As expected, the government has informed the Federal Circuit of its intention to seek en banc rehearing in Arthrex Inc. v. Smith & Nephew, Inc.  Having intervened in a number of cases seeking remand post-Arthrex the government has now moved to stay these proceedings pending its en banc petition. Continue Reading Government Indicates En Banc Petition Forthcoming for Arthrex

Orders Stave Off Further Remands….For Now

During last week’s argument in Polaris, appellant argued that the Court’s fix to the PTAB’s Appointments Clause problem was insufficient. According to appellant, “reviewability” is the touchstone of recent Appointments Clause precedent, and that as the proposed fix did not address the lack of reviewability over APJ decisions (because the Federal Circuit could not), it was up to Congress to fix.  During that same hearing, the Court contemplated additional briefing on this topic, which it recently solicited from the parties.

In the meantime, learning from its mistake in its recent Uniloc remand, the Federal Circuit is now allowing time for the government to intervene in parties seeking remand after Arthrex (here) and (here). Continue Reading Lawmakers Consider Fix as CAFC Deals With PTAB Appointments Clause Fallout

Reasonably Could Have Raised & Reasonably Diligent

Prior to last year’s SAS decision, district courts split over whether non-petitioned grounds were embraced by the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) and 325(e)(2) estoppel.  However, a growing number of district courts post-SAS have construed this phrase to define grounds that a party could have included in its petition, but did not.  In doing so, the courts are also making clear that the burden of proving that a ground could have reasonably have been raised, lies with the Patent Owner. Continue Reading Courts Apply More Flexible Analysis to PTAB Estoppel

Appointments Clause Argument Forfeited if Not Raised in Opening Brief

With the ink barely dry on Thursday’s Federal Circuit ruling that the Administrative Patent Judges (APJs) of the Patent Trial & Appeal Board (PTAB) were unconstitutionally appointed, Appellant Notices of Supplemental Authority began to roll into the Court Friday morning.  For Appellants that had appropriately raised the issue in their opening brief to the Court, some were remanded to the PTAB (Uniloc 2017 LLC. v. Facebook Inc.).  Other such appeals were allowed to proceed to oral argument based, in part, on DOJ involvement. (such as today’s argument in Polaris Innovations Limited v Kingston Technology Co. Inc.)

For Appellants hoping to take advantage of the Appointments Clause development who had not briefed it, the Court found such arguments forfeited. Continue Reading CAFC Quickly Shuts Down Belated Appointments Clause Arguments

Well, that Escalated Quickly…

On the heels of the supplemental briefing discussed yesterday, the Federal Circuit has already issued its decision in  Arthrex Inc. v. Smith & Nephew, Inc.  The Court has vacated and remanded the decision, ordering  a new hearing before a panel of different APJs, prospectively remedying the issue by severing the problematic aspect of 35 U.S.C. § 3(c).

So, what does this mean for pending appeals? Continue Reading CAFC: PTAB Judges Operating in Violation of Appointments Clause