Issue Joinder Debate Comes Full Circle

As previously discussed, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) has considered its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)

The POP reversed the earlier (divided) panel decision in Proppant Express (which conflicted with the earlier consensus of Target Corp. v. Destination Maternity), holding that 35 U.S.C. § 315(c) permits issue joinder. More specifically, the POP held that 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding (here).

That is, we are right back where we started in Target. Continue Reading New PTAB Precedent: Issue Joinder is Discretionary

Judge Scott Boalick Formally Appointed Chief

The United States Patent and Trademark Office (USPTO) announced today the appointment of Scott Boalick as Chief Judge for the Patent Trial and Appeal Board (PTAB). Boalick has served as the acting Chief Judge for the PTAB since September 2018. Boalick begins his permanent role today.

Boalick was appointed to the Board in 2007. Prior to becoming the acting chief judge, he served as an administrative patent judge, lead judge, vice chief judge, and deputy chief judge.

Also today, the USPTO announced that Jacqueline Bonilla has been appointed as the Deputy Chief Judge of the PTAB, having served as the acting deputy chief judge of the PTAB since September 2018. Bonilla will also begin her position today.

Plenty of March CLE Programs to Choose From

There are quite a few Patent Trial & Appeal Board (PTAB) related CLE events over the next few weeks.

First, today, the PatentsPostGrant March Webinar will cover Patent Derivation, Trade Secret Misappropriation & Inventorship Disputes @2PM (EST).  This program will cover the full breadth of considerations facing research heavy technologies (e.g., Bio/Pharma, semiconductor, etc) under the America Invents Act (AIA).

Register (here) 

Later this week, the 2019 PTAB Bar Association Annual Conference will come town on March 14 – 15, 2019, at the Ritz-Carlton in Washington, D.C. Pre-conference sessions will be offered March 13th. I’m honored to once again moderate the PTAB Master Class.  

You can view the full agenda and session descriptions (here).

For those not able to get to DC, next Monday, 3/18 @3PM the Practising Law Institute will host a webinar entitled: Getting Your Patent Out of the PTAB: New Opportunities. This program will explore new best practices and address how to leverage the evolving PTAB landscape, including new petitioner risks, patent owner opportunities and changes to come.

I am pleased to once again join with Rob Sterne of Sterne Kessler Goldstein and Fox on this PLI program. Register (here)

Finally, closing out the month of March, on Wednesday, March 27th, the American University Washington College of Law, Federal Circuit Bar Association, & Unified Patents Inc. present the Ninth Annual Patent Administrative Law Conference. The program will cover a host of hot topics including a panel on PTAB changes, and wireless standards and patent pools.

Register (here)

I hope you are available to join one of these upcoming events.

PTAB Updates Amendment Precedent

Today, the Patent Trial & Appeal Board (PTAB) designated Lectrosonics, Inc. v. Zaxcom, Inc, (IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) precedential as to the agency’s interpretation of 35 U.S.C § 316(d), amendment requirements and burden.

The Order provides guidance and information regarding statutory and regulatory requirements for a motion to amend in light of Federal Circuit case law. Specifically, the order sets forth guidance, such as: (1) contingent motions to amend; (2) the burden of persuasion that the Office applies when considering the patentability of substitute claims; (3) the requirement that a patent owner propose a reasonable number of substitute claims; (4) the requirement that the amendment respond to a ground of unpatentability involved in the trial; (5) the scope of the proposed substitute claims; (6) the requirement that a patent owner provide a claim listing with its motion to amend; (7) the default page limits that apply to motion to amend briefing; and (8) the duty of candor. This decision replaces Western Digital Corp. v. SPEX Techs., Inc., (IPR2018-00082, -00084) (PTAB April 25, 2018) (Paper 13).

The only significant change in Lectrosonics as compared to Spex is language clarifying the right of petitioner to submit evidence during the amendment briefing cycle:

A petitioner may submit additional testimony and evidence with an opposition to the motion to amend, and a patent owner may do likewise with a reply. Generally, a reply or sur-reply may only respond to arguments raised in the preceding brief.  A petitioner’s sur-reply may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness.  A petitioner’s sur-reply should only respond to arguments made in a reply, comment on reply declaration testimony, or point to cross examination testimony.

(internal citations omitted)

The Office is currently working on finalizing its earlier proposed amendment pilot program, this appears to be laying the final groundwork for that roll out.

Unified Patents’ PTAB Database & Analytics

While Patent Trial & Appeal Board (PTAB) documents may be accessed by the USPTO’s PTABE2E portal, this portal offers minimal search options and no analytics whatsoever.  When looking for more than just a straightforward document retrieval (i.e., most of the time), I use Unified Patents free PTAB portal (here).

The Unified Portal offers a host of helpful analytics on both PTAB and district court litigation filing trends, dispositions, particular judges, technologies, as well as law firms.  For researching PTAB issues, it is an indispensable tool, and best of all, it’s free.

Close Trial Date to Doom Parallel IPR Petitions?

Last September, the Patent Trial & Appeal Board (PTAB) found the advanced stage of a parallel district court proceeding weighed in favor of denying a follow-on, IPR petition. NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc. That is, when weighing the equities of a follow-on petition under General Plastic, the competing litigation’s scheduled conclusion before the end of any potentially instituted IPR favored a discretionary denial of the petition under 35 U.S.C. § 314(a).

Since that time, the existence of late stage litigation proceedings has been raised in the context of first-filed petitions, and is beginning to gain traction there as well. Continue Reading PTAB Equitable Analysis Extends Beyond Follow-on Petitions

Burden on Patent Owner to Show Product Manual Available

Does the use of a printed manual at the PTAB foreclose later use of the underlying product in litigation? We know from cases like In Star EnviroTech, Inc. v. Redline Detection, LLC et. al., 8-12-cv-01861 (CACD January 29, 2015, Order) that where a product is superior to a publication in terms of relevant detail, it is considered outside of the reach of 315(e) estoppel.

But what about where the product is the same as a manual that could have been used in the IPR? Continue Reading Avoiding PTAB Estoppel with Physical Product Combinations

PatentsPostGrant.com March Webinar

Derivation proceedings have yet to be instituted in number at the Patent Trial & Appeal Board, but that is not due to a dearth of such disputes. Quite the contrary, in-house counsel increasingly find themselves grappling with a multitude of disparate legal considerations relative to departing employees in the First-Inventor-to-File era. Protecting ongoing research has become a hybrid exercise in managing company patent policies together with trade secret misappropriation concerns, employee contract considerations and even potential criminal penalties. Swift assessment of such threats is especially critical to maintaining proprietary protections for valued research.

Please join me for an interactive webinar discussion of these new strategic considerations Monday, March 11th@2PM (EST). Register (here)

My co-presenter for this webinar will be Ropes & Gray Life Sciences IP Litigation Chair Filko Prugo and Trade Secret Specialist Peter Brody.

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period.

To attend the free webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Does 315(b) Codify Party Notice or Patent Notice?

Last summer, the Federal Circuit reversed the Patent Trial & Appeal Board’s (PTAB) practice of accepting IPR petitions as timely filed under 35 U.S.C. § 315(b) where a complaint for infringement was served outside of the one-year window, but dismissed without prejudice. Click-to-Call v. Ingenio   In its reversal, the Court reasoned that “the appropriate question is whether the voluntary, without prejudice dismissal of a civil action in which a complaint had been served nullifies an administrative time bar that is triggered by service of that complaint. It does not.”  As a result, IPR proceedings before the Board that had been instituted under that previous 315(b) exception have been terminated.

Since Click-to-Call, the question has been raised whether the 315(b) bar is triggered by a complaint for infringement of a patent where there is a question as to the ultimate patent owner, which causes the suit to be dismissed without prejudice and re-filed.

I don’t expect the Federal Circuit’s answer to be any different. Continue Reading PTAB Identifies New Exception to One-Year Time Bar

Estopping a Winning Argument?

One of the stranger developments of recent months has been the interpretation of PTAB estoppel (315(e)(2)) to foreclose a petitioner from pursuing arguments in a district court that were successful at the PTAB. That is, a petitioner that has successfully defeated claims at the PTAB, and has received a Final Written Decision (FWD) explaining the same, is thereafter estopped from making the same successful arguments in court.

Earlier this month, the government supported this position in an amicus brief to the Federal Circuit in BTG v. Amneal. In it’s brief, the government explains that its interpretation leads to the “counterintuitive result that the district court would not be able to consider invalidity arguments that the Board found persuasive.”

Aside from interpreting the statute to be “counterintuitive” in the first instance, which is canon of sorts in statutory construction, it also requires one to construe estoppel as somehow guarding against consistency. Continue Reading PTAB Estoppel as a Sword and Shield?