Arthrex Argument Being Added to Briefs

As detailed back in December, the government has sought en banc rehearing in Arthrex. In its petition, the government revisited the bases for the Court’s October decision and encouraged the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency).

In its Reply of last week, the government once again focuses on forfeiture, arguing that raising an Appointments Clause issue on appeal is too late.  To emphasize the issue, the Reply lists all of the newly filed appeals raising the issue for the first time. Continue Reading Gov’t Warns CAFC Over Growing Arthrex Docket

Adding New Blood into the Estoppel Mix

IPR estoppel under 35 U.S.C. § 315(e)(2) provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added).  As pointed out previously, a growing number of district courts have construed the phrase the “reasonably could have raised” aspect of 35 U.S.C. §§ 315(e)(2) to define grounds that a party could have included in its petition, but did not.

Assuming a failed petitioner can locate a piece of prior art that it could not have raised earlier (and make the appropriate showing to avoid estoppel) are combinations with failed art of the IPR precluded? Continue Reading Rehabilitating Failed PTAB Art

SCOTUS Declines to Wade Into 101 Morass

One of the more noteworthy IP law developments of 2019 was the patent subject matter eligibility (35 U.S.C. § 101) craze that swept Congress in the late spring of 2019.  With unprecedented marathon hearings, and almost universal agreement from dozens of witnesses on the unpredictable state of subject matter eligibility jurisprudence, a legislative fix appeared imminent. Yet, this craze was short-lived.  The significant momentum of the spring hearings fizzled into deadlock in late summer— then the entire effort was left for dead in the fall.  With Congress losing its traction, all eyes turned to the SCOTUS and the prominent cert petitions on the docket that raised the prospect of some form of 101 review from the high court.

But, the court denied all such cert petitions today.  Continue Reading 101 Debate Punted Back to Congress

New Tactics & Risks for Litigators

On Monday, I laid out my Top 5 PTAB cases of 2019 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like Monday’s list, my Top 5 PTAB developments of 2019 for District Court Litigators will focus on those practical developments that will impact related litigation practices outside of the agency.

In 2019, there were a number developments of interest to litigators, from tricks to avoid the PTAB altogether, to new risks on fee awards and estoppel.   Continue Reading Top 5 PTAB Developments of 2019 for District Court Litigators

PTAB 2019: A Year of New Precedent

There were a number of high profile developments at the Patent Trial & Appeal Board (PTAB) in 2019. New procedures for amending claims, Practice Guide updates to thwart parallel petition filings, a successful constitutional challenge based on the Appointments Clause, and another SCOTUS review of the PTAB appeal bar.  But, not all of these developments impact the day-to-day life of PTAB practitioners.  Of greater interest to PTAB practitioners are the developments that change the game for the average AIA trial, with this in mind, below are my Top 5 PTAB Practitioner Developments of 2019. Continue Reading Top 5 PTAB Decisions of 2019 for PTAB Practitioners

Totality of Circumstances for Determining Public Accessibility

Over the years, the Patent Trial & Appeal Board had become panel dependent in assessing questions of public accessibility at institution.  Some panels seemed to require a showing of a likelihood of public accessibility to move forward, while others  required a more definitive showing.  Last spring, the Precedential Opinion Panel (POP) took up this growing rift in institution standards in Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039. Specifically,  the  POP addressed the requirements for establishing that a reference qualifies as a printed publication at the time of institution.

In its now precedential decision, the Board found that a more flexible approach was needed at institution. Continue Reading PTAB POP Recalibrates Institution Analysis for Public Accessibility

CAFC Faults PTAB Nexus Presumption

A proper obviousness analysis under Graham v. John Deere analyzes four factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the patent claims; (3) the level of ordinary skill in the art; and (4) secondary considerations or “objective indicia” of non-obviousness. Yet, objective indicia arguments are relatively uncommon in the predictable arts.  And even when they are advanced, the argument is rarely effective. This is because establishing  a nexus between a patent claim and such amorphous concepts as “commercial success” (the most commonly advanced form of indicia) is a far more complex undertaking than most practitioners appreciate.

A patentee is entitled to a rebuttable presumption of nexus between its asserted objective indicia and a patent claim if the patentee shows that the indicia is tied to a specific product and that the product is the invention disclosed and claimed.  Earlier this week, the Federal Circuit analyzed how close a claim needs to be to the purported “invention” to qualify for the presumption of nexus. Continue Reading Critical Aspects of Invention Need to Be Claimed for Secondary Indicia to Stick

Gov’t Questions Fundamental Aspects of Court Decision

As promised, the government has now sought en banc rehearing in Arthrex. In its petition, the government revisits the bases for the Court’s October decision and encourages the Court to also grant rehearing in the Polaris dispute so that the court might address forfeiture in Arthrex and reach the remaining issues in Polaris (which is distinguished in the petition as having seasonably argued the issue before the agency)

I think it is safe to predict the CAFC takes this one up.

Continue Reading En Banc CAFC to Debate PTAB Appointments Clause Issue

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!