Longest Running PTAB Program Returns Next Week (Live Webcast)!

This coming Wednesday, September 9th brings the return of Practising Law Institute’s Advanced PTAB Trial Strategies.

This year the program will focus on a half-day of advanced topics beginning at 9AM (EST), but in its usual interactive format.  This year’s high-level focus is designed to go well beyond the basics to explore emerging practice trends, discuss overlapping litigation strategies/concerns, and analyze advanced trial tactics for petitioners and patent owners alike.  From the changing political winds driving precedent and agency policies, to in-the-trenches feedback, this program will deliver significant value to PTAB practitioners and in-house counsel.  (West Coast registrants will be able to watch the program on-demand rather than getting up at 6AM 🙂 )

The half-day schedule provides:

  • Advanced PTAB Trial Grounds: Petition Drafting, Support & Strategy, Patent Owner Evidence, Counter-Arguments/Strategy
  • Navigating Critical PTAB Procedures: Depositions, Amending & Motions
  • Administrative Trial Advocacy in PTAB Patent Proceedings: Oral Argument, Briefing, Technical Audiences, Standards of Review

I am pleased to be returning as co-chair alongside Robert Greene Sterne of the Sterne Kessler firm. Register (here)

PTAB Invalidation of Original Claims Bars Pre-issue Damages for Reissued Claims

A surprisingly underutilized patenting mechanism — the reissue patent application — should be an essential component of any portfolio building practice.  The reissue application allows patent owners to correct/adjust claim scope (in some cases broaden), add additional claims, and perform a number of other corrections to an originally issued patent prior to asserting it.

For example, where a Patent Owner has its claims cancelled that the PTAB, the Patent Owner may seek to reissue its patent thereafter with new, narrower claims.  (This option may be more attractive than the PTAB’s amendment process, which is limited in the number of claims that may be raised, and, reissue is not an inter partes process).

But, reissue is not  a magic time machine. That is, trying to resurrect a damages case linked to your earlier cancelled claims by arguing that your narrowed, reissue claims are somehow the same scope, is a losing argument (not surprisingly) Continue Reading Reissue Claims Substantially Identical to Invalidated Claims Ensnared by Collateral Estoppel

APA Action & Mandamus Petition Simultaneously Challenge PTAB’s NHK/Fintiv Framework

Back in June, I predicted that an APA action against the USPTO and/or a mandamus petition to the Federal Circuit was inevitable given the PTAB’s practice of denying IPR petitions in favor of competing district court trial dates. Well…here we are.

Yesterday,  Director Iancu was sued by a group of large tech companies for allegedly violating the APA by denying IPR petitions on the basis of a competing trial date, and late last week, one of the same companies also filed a mandamus petition seeking to force the agency to consider the merits of a petition denied as a matter of discretion even though it was filed some seven months before the 315(b) deadline.

Never a dull moment at the PTAB. Continue Reading USPTO Sued Over Discretionary Denials

Agency Memorandum Clears Up Long Standing PTAB Debate…For Now

Earlier this week, a guidance memo was issued to the Patent Trial & Appeal Board (PTAB) on the use of Applicant Admitted Prior Art (AAPA) in IPR proceedings.  Much like the agency’s earlier 101 Guidelines on Patent Subject Matter Eligibility, the AAPA Guidance is more a pronouncement of the agency’s independent view of the law as opposed to more traditional implementation guidance on regulatory practices or new CAFC/SCOTUS jurisprudence.  As we know from the Federal Circuit’s feedback on the 101 Guidelines, such independent pronouncements are given little weight outside the agency.

Nevertheless, it is at least helpful to practitioners to have a definitive answer on this issue given the years of PTAB panel variability.  But, this guidance seems a bit short-sighted to my eye. Continue Reading Admitted Art Ruled Out as IPR Trial Ground Reference

If the PTAB Fee Model is Biased, Patent Owners Have Much Bigger Problems

Recently, a due process challenge has been raised to the PTAB fee model in 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, currently $15,000, 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.”

But, if the USPTO is making decisions solely based upon potential revenue, patent owners have much bigger problems. Continue Reading Due Process Challenges to the PTAB Fee Model?

AIPLA Bench & Bar/IPWatchdog Con2020

A few virtual CLE programs on the horizon, including AIPLA’s PTAB Bench & Bar Conference, and the inaugural IPWatchdog Con!

First up, AIPLA’s VIRTUAL PTAB Bench & Bar Conference will be held on August 20th from 3-6PM (EST). This program provides two sessions on Trial Proceedings before the PTAB, and the opportunity to discuss current issues with fellow practitioners and USPTO personnel in small break out sessions. The traditional sessions will explore Discretionary Denials: What Petitioners and Patent Owners Need to Know; and Practice Tips For Effective Briefing/Evidence At Each Stage of the Trial.  Register (here)

Second, the inaugural, and also entirely virtual, IPWatchdog Con2020 will run from September 1-30, 2020. Previously scheduled as a 3-day live event, the pandemic has forced the program into a topic or two, per day, over the full month of September (It’s a virtual mardi gras of IP law!) This program covers far more than just the PTAB, including the full spectrum of issues facing innovators, creators and brand owners. Register (here)

Looking forward to both of these innovative programs.

AIA Trial Fees Increasing + New Pro Hac Fee

The United States Patent and Trademark Office (USPTO) is increasing Patent and Patent Trial and Appeal Board (PTAB) fees for a second time in three years.  The new fees schedule, effective October 2, 2020, incudes a new fee for non-registered practitioners to appear before the PTAB pro hac vice.  Patent reexamination and reissue fees will increase by roughly 5%. ) Continue Reading PTAB Trial Fees Increase 25% in October

CAFC Refuses Remand on 112 6th Deficiencies

When challenging claims at the Patent Trial & Appeal Board (PTAB), Rule 42.104(b)(3) requires a Petitioner to identify the specific portions of a challenged patent’s specification that describe the structure corresponding to a claim’s means-plus-function claim feature.  Of course, if a petitioner fails to do so, the Board will reject Petitioner’s challenge for failing to comply with the Rule.  To the frustration of petitioners, however, where that failure is based upon the shortcomings of the challenged patent itself, the PTAB is  precluded from officially making such an indefiniteness determination.  Instead, the Board will simply conclude that the rule has not been satisfied.

A week back, the Federal Circuit reiterated this shortcoming of the IPR statutes. Continue Reading PTAB Can’t Find Means-Plus-Function Claims Defective

Delaware Cases Slipping 4-6 Months

The practice of denying AIA trial petitions in view of competing district court trial dates has brought some negative attention to the Patent Trial & Appeal Board (PTAB) over the past few months. At the same time, patent litigation has increased over the first two quarters of the year by 20%.  This surge has been greatly aided by the exploding popularity of the Western District of Texas (WDTX) with non-practicing entities — a district that the PTAB is increasingly deferring to in its discretionary denials based upon competing trial dates.

While Patent Owners are quick to point to a looming district court trial date as being set in stone, in reality, these dates are often reset once the PTAB hurdle is cleared. Continue Reading District Court Trial Dates Tend to Slip After PTAB Discretionary Denials

CAFC Holds IPR Claim Amendments Subject To Full Patentability Examination

Yesterday, a divided CAFC panel held in Uniloc 2017 LLC v. Hulu, LLC (here) that during an IPR proceeding, the Board may consider any patentability challenge—including subject matter eligibility—if the Patent Owner moves to amend its claims under § 316(d).  The Court continues to emphasize the agency’s duty to the public in assessing patentability of the patent claims it issues. Continue Reading 101 is Fair Game for Assessing PTAB Amendments