CAFC Upholds Injunction to Shut Down PTAB

The AIA statutes provide that a person who is not the owner of a patent, can challenge the patent at the Patent Trial & Appeal Board (PTAB). Pursuant to the bright lines drawn by the statute, the PTAB has accepted AIA challenges from non-owners where traditional defenses may have prevented such challenges in other fora. For example, while assignor estoppel might preclude a patent validity challenge in a district court, the PTAB accepts such challenges. In affirming this practice, the Federal Circuit explained that common-law doctrines are subject to abrogation of the AIA statutes.

A more recent argument has been that private agreement, such as a forum selection clause, can divest the PTAB of jurisdiction of a patent validity dispute. For its part, the PTAB has disagreed to date…..the District court on the other hand, has attempted to enjoin petitioners from continuing that the PTAB in such circumstances. Today, the Federal Circuit has backed the injunction strategy, effectively shutting down the PTAB. Continue Reading Shutting Down the PTAB with Forum Selection Clauses

AIPLA Webinar to Explore Convergence of Claim Construction Practices

Today, AIPLA presents Patent Infringement & The PTAB: The Emergence of a Bifurcated System? (here) The webinar will be conducted 1230 – 2PM (EST). CLE credit is available.

AIA Trial Proceedings were designed by Congress to provide an alternative route to challenging patent validity. Now, with the alignment of the courts and Patent Trial & Appeal Board (PTAB) on critical matters of claim construction, and with the Board’s expedited schedule outpacing all but the most aggressive of district court dockets, the PTAB is providing a new alternative — a potential path away from Markman determinations. Given the additional potential for simplification of district court issues, the PTAB is positioned to become the first phase of a new bifurcated system of sorts. That is, the first-in-time claim construction may begin to drive the critical issue of claim construction in patent litigation.

Given these new dynamics, the webinar will explore the overlap of issues and the resulting change to the patent litigation landscape:

  • The potential for increased stays give the Phillips switch and post-SAS Institute
  • The applicability of collateral estoppel across for a on matters of claim construction
  • Impact of PTAB claim constructions on parallel Markman determinations, and the use of Markman Orders at the PTAB
  • Strategies for approaching PTAB petition practice under Phillips
  • Patent Owner strategies for managing the alignment of standards across fora
  • Use of PTAB fact-finding in summary determinations

Hope to speak to you then.

Senate/House Outline Follows USPTO’s Top-Down Approach

The USPTO released Revised Guidance on Patent Eligibility Under 35 U.S.C. § 101 back in January. The Guidelines simplified the case law by presenting a top-down approach to distill the morass of case law on abstract ideas into a list of exempted categories.

Under its new Guidleines, if a patented claim was not directed to an exempt category, the the claims passed muster. If the claim is directed to an enumerated category, a practical application analysis is then performed, and if satisfied, the claims still pass 101 scrutiny. The result is a more patent friendly, and manageable analysis….at least at the USPTO.

Since introduction of the Guidelines, however, the Courts have declined to show them deference. Yet, Congress appears poised to enact legislation to forcibly align the Courts with the agency 101 Guidelines. Continue Reading Congress Poised to Align Courts with USPTO on 101 Reform

Precedent Indicates Mistaken RPI Correctable Without Date Reset

A few weeks back I pointed out that the Patent Trial & Appeal Board (PTAB) had changed its position on whether or not a new RPI designation requires a resetting of the petition filing date. It has now made that determination precedential, along with two other decisions on the topic. Continue Reading PTAB Determines that RPI Designation is Not a Statutory Requirement After All

Timing of Estoppel Unimportant

Last week in Novartis Pharmaceutical Corp. v. Par Pharmaceutical Inc., Nos. 14-1289-RGA, 14-1494-RGA, 15-0078-RGA (D. Del. Apr. 11, 2019), (here) the court addressed a motion to estop defendants from asserting invalidity arguments based on prior art references already presented at trial. The motion argued that, in related IPR proceedings brought while litigation was pending, the same defendants challenged and failed to prove the unpatentability of overlapping claims. The Board’s Final Written Decision (FWD) issued during the appeal. (later remanded back to D.Del)

Novartis argued that, irrespective of the timing of the FWD, that the invalidity defenses and counterclaims presented at trial by defendants should be estopped. Continue Reading PTAB Estoppel Thwarts Post-Trial Invalidity Consideration

Director Encouraged to Do What He is Already Doing?

At several bar events over the past few weeks, the Director has made clear that the agency is “looking into” ways to address certain serial petitioning practices beyond that of the “follow-on” scenario. For example, where multiple petitions are filed at the same time for the sole purpose of multiplying the number of grounds for an AIA trial proceeding.

This past Tuesday, the Senate Judiciary Committee sent a letter to Director Iancu seemingly asking him to do what he is already doing.  And for him to respond to proposed directives (transparently presented in the form of questions) on accomplishing such. Continue Reading Senate Provides Directives to USPTO to Attack Serial PTAB Filings

Unchallenged Claim Falls on Summary Judgement

Back in 2016, I flagged a few district court decisions that leveraged Patent Trial & Appeal Board (PTAB) fact-finding on summary determination. These decisions weighed the fact finding of the expert agency as “compelling evidence” and noted the Board”s “expertise in evaluating prior art and assessing patent validity.”  While crediting the fact finding on common technical issues, these decisions stopped short of finding outright issue preclusion based upon the earlier PTAB proceeding.

However in some instances, PTAB determinations might be leveraged to attack claims that slipped through the PTAB net. Continue Reading PTAB Collateral Estoppel as Summary Judgment Tool

Boardside Chat This Wednesday

This Wednesday, April 10, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar about the new pilot program for motions to amend in AIA trials. Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will present.

The new Pilot program, effective March 15th, will be conducted for one year to examine the benefits of enhanced feedback to Patent Owners during the amendment process.

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

Justice Dept. Defends Challenge to APJ Appointments

The latest constitutional challenge to the Patent Trial & Appeal Board (PTAB) involves the Appointments Clause.

The Appointments Clause of the U.S. Constitution has been interpreted to require that only “Principal Officers” of the United States — appointed by the President and confirmed by the Senate — can exercise “significant authority” pursuant to the laws of the United States. What is significant authority, you ask?  In a nutshell, the final word of the U.S. government.

So the debate in the now pending petition for certiorari in Polaris Innovations Ltd. v. Kingston Tech. (and in other petitions for cert raising the same issue) has become whether the APJs of the PTAB are superior officers rendering the final word of the government in PTAB trial proceedings, or whether they are instead functioning as “inferior officers” subject to the control of the Director (a political appointee, confirmed by the Senate).

The Government weighed in earlier this week on these petitions for certiorari. Continue Reading PTAB Judges Argued as Inferior Officers

New Chief & Deputy Chief to Speak Thursday

The Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar this Thursday, April 4th from noon to 1pm(EST). The webinar will introduce new Chief Judge Scott Boalick and Deputy Chief Judge Jackie Bonilla. The judges will discuss recent precedential and informative decisions issued by the PTAB. These decisions concern motions to amend, use of live testimony at AIA trials, same party joinder, and subject matter eligibility.

More information, including the webinar access information, is available on the PTAB “Boardside Chat” webinar series webpage of the USPTO website.

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