FWD Statutory Estoppel vs. Collateral Estoppel

In designing the America Invents Act (AIA), statutory estoppel of 35 U.S.C. § 315(e)(2) was set to by legislators to attach at the time of the PTAB’s Final Written Decision (FWD).  This is despite the fact that further appeals are routine.  This statutory design was responsive to the previous criticism of inter partes reexamination estoppel, which attached only after all appeals were exhausted.

Yet, this statutory design often puts district courts in the unenviable position of treating an otherwise non-final decision, as final……at least with respect to petitioner estoppel.  As to claims that may be cancelled in the same FWD, courts are free to await further appeals.

This unbalanced scenario can be exploited by Patent Owners. Continue Reading Patent Owner Uses FWD Cancelling Claims as a Sword & Shield

AIPLA Webinar Next Tuesday

For those seeking some PTAB-related CLE, consider next Tuesday’s AIPLA webinar @12:30 (EST) entitled:  Discretionary Denials Revisited: The New Politics of Fintiv.  Register (here)

The program will explore the increasing politicization of the USPTO Director position, and what may be on the horizon relative to the uncodified discretionary policies of the last administration (i.e., the Fintiv Factors). As plaintiffs continue to flock to the Western District of Texas (WDTX) for the benefit of its aggressive schedule, the PTAB is left to grapple with the practicalities of the mushrooming WDTX docket, stipulations of parties on common issues, and the role of the AIA in the overall equation. This 1.5 credit program will explore the current trends in 314(a) disputes/decisions, and what to expect going forward as the PTO awaits a senate confirmed Director.

Hope you are able to join.

Pursuing Different Constructions Before the PTAB & Court?

Since the PTAB started applying the Philips standard for claim construction, petitioners have put a lot more thought into their proposed claim constructions. This is because it is no longer possible to point to the PTAB’s use of the broadest reasonable interpretation (BRI) as the basis for a different construction.

Now, petitioners are very careful to be consistent with disputed terms.  But, what happens if a petitioner argues for a broader construction at the PTAB, then argues for a more narrowed construction in the district court? Continue Reading Keeping Your PTAB Story Straight

Arthrex Provides Little Strategic Value in the End

Today the PTAB issued interim guidance on adaptations to its rehearing practices.  The interim procedures allow for a rehearing to be filed to the Director, this option can even be pursued after a failed rehearing to the assigned PTAB panel.  So, good news for those parties seeking another path for delay. On the other hand, the Director is not going to change the outcome of cases beyond current practices (roughly 5% win rate on rehearing).

In essence, the Appointment’s Clause battle, much like the constitutional challenges to the PTAB posed in Oil States and Cuozzo, was a long road to nowhere. Continue Reading PTAB Director Rehearing Adds Little

Director Has Final Say…But Mostly More Busy Work

I’ve ignored the Arthrex decision for a few days, largely because it never really interested me (still doesn’t).  Of course, if you geek out over the severability doctrine, or the viewpoints of liberal versus conservative justices on the growing administrative state — have at it.  I just always saw it as an academic exercise that would have little impact on actual day-to-day PTAB practice.  As I predicted back in March, the SCOTUS result in Arthrex wasn’t exactly surprising.

While the Arthrex outcome will not change much in terms of PTAB strategy, there will be a beautiful mess in the short term. Continue Reading PTAB Rehearings After Arthrex?

OED to Explain PTAB Admission Practice Thursday

This Thursday, June 17th, from noon to 1 p.m. ET, the PTAB’s Boardside chat webinar will explore the mechanics of admission to practice before the Patent Trial and Appeal Board (PTAB).

Office of Enrollment and Discipline (OED) Attorney Kimberly Weinreich will discuss admission to practice before the United States Patent and Trademark Office (USPTO), including current requirements for the patent bar and proposed administrative updates and comments received from the public. PTAB Supervisory Patent Attorney Steven Fulk will discuss pro hac vice admission before the PTAB.

There will be a Q&A session at the end.  Questions may be in advance or during the webinar to PTABBoardsideChat@uspto.gov.

Register (here)

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Government Claims in Arthrex Catch Eye of House Judiciary

As we await the SCOTUS outcome in Arthrex, the Government Accountability Office (GAO) has been tasked with investigating the degree to which the Director might influence individual PTAB outcomes.  In a letter to the GAO from House Judiciary IP Subcommittee Chairman Hank Johnson (D-Ga.) and Ranking Member Darrell Issa (R-Calif.), it was pointed out that the U.S. government has argued in Arthrex  that APJs are inferior officers because they are “subject to significant oversight and control by the Director of the USPTO” who has the ability to “control[] which APJs decide which cases” and “provid[e] policy directives that APJs are obligated to follow.”

The letter (here) expressed a concern that the government has effectively indicated that “PTAB cases may have been decided based on factors outside of the evidentiary record and public legal authority,” which they argued “raises potential due process concerns and would be inconsistent with the intent of Congress in enacting the AIA.” While political appointees are expected to drive overall policy, of course, they are not expected to meddle in individual outcomes. Accordingly, the Subcommittee has tasked the GAO with investigating eight questions designed to explore the Director’s ability to influence individual PTAB decisions, and any instances where the Director has actually influenced the outcome of a decision. Continue Reading Congress Questions USPTO Director Input to PTAB Trial Outcomes

WDTX Losing its PTAB Mojo – Fintiv Outdated?

The Federal District for the Western District of Texas (WDTX) is a hotbed of patent litigation. Since 2016, the case load has increased some 700%, with a single federal judge (Hon. Alan Albright) now presiding over 20% of the nation’s patent litigation docket.  One of the primary attractions of the WDTX is its default schedule, which Judge Albright has highlighted should beat the PTAB’s competing trial timing.  Consequently, the vast majority of 314(a) discretionary denials at the PTAB involve WDTX cases.  That is, the PTAB has shown deference to the speed and investment of the WDTX when determining if it should exercise discretion to deny an AIA trial petition.

But recently, the PTAB has begun to look more closely at the actual investment the Court is making in cases.  As the Court issues patent decisions at a breakneck pace, the level of analysis and value to the public is now being questioned by the agency.  Meanwhile, others are asserting that the default schedule is increasingly implausible with upward of 20 trials being scheduled for a given date.

As the WDTX docket continues to expand, its limited bandwidth may be its undoing. Continue Reading WDTX “Implausible Schedule” & Cursory Markman Order Highlighted

Are Two Heads Better than One?

When faced with parallel PTAB and District Court/ITC proceedings, both patent owners and petitioners alike must decide whether to use the same expert in each proceeding, or hire a dedicated expert for each. Certainly there is much efficiency to be gained using the same person — not to mention the seeming likelihood of greater consistency in opinion.

But it is preferable, in my view, to use separate experts. This often limits document inventory for the PTAB deposition, and opposing counsel is less inclined to extend the deposition with questions that are designed to illicit fodder for the litigation effort. Likewise, use of separate experts does not give litigation counsel extra “shots” at the same witness.  Also, with the PTAB now applying the same Philips claim construction of the district court, as discussed previously, there is also an increased interest in claim construction related testimony should the PTAB proceeding fail.

Recently, the District of Delaware considered whether a litigation expert should have to divulge any consulting (non-testifying) work with respect to an earlier PTAB proceeding.

Continue Reading Using the Same Expert at the PTAB & District Court?

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Is a Trade Secret Readily Ascertainable if it is in the Prior Art?

Since the passage of the Defend Trade Secret Protections Act (DTSA) in 2016, trade secret litigation has become more attractive. The DTSA provides a federal remedy in place of the scattershot approaches previously available under varying state laws. Often times, a trade secret claim will accompany a patent assertion.

More recently courts are beginning to consider the impact of a given trade secret being in the prior art, akin to patent validity analyses. Continue Reading Using the PTAB to Undermine an Alleged Trade Secret