New Confirmation to Drive New Policy?

At long last, the Senate has finally confirmed Kathy Vidal as the new PTO Director….just in time to tender her resignation before the next administration!  Ok, maybe not quite that late.  But considering it can take close to two years for any Notice and Comment Rulemaking to get through the system, these appointment delays can seriously hamstring a Director’s ability to drive any significant policy change.

So, the new Director needs to hit the ground running.  And, as usual, the PTAB offers some early hurdles. Continue Reading Finally, a New PTO Director. Now What?

Federal Circuit Affirms Hunting Titan POP Decision

In Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The PTAB’s POP panel reviewed the denial of a Motion to Amend based upon a panel’s sua sponte modification of a petitioner’s proposed ground (here).  In reversing that determination, the POP found that such a sua sponte action should be a “rare circumstance.”  For example,  where there is a readily identifiable patentability concern apparent in the record.

At the time, I pointed out that when a petitioner presents a 103 ground that in reality is a 102 ground, I could not imagine how such a circumstance was not readily identifiable, and rare.  While seemingly agreeing with me, the Federal Circuit nonetheless affirmed the POP panel. Continue Reading No PTAB Duty to Separately Examine Amended Claims

How the PTAB Ticks This Thursday!

Do you want to learn more about the inner workings of the Patent Trial and Appeal Board (PTAB)?   Hello!!….what IP nerd doesn’t!?   If so, the next PTAB Boardside Chat webinar will really spin the propeller on your cap.

This Thursday, March 17, from noon to 1 p.m. ET, the agency discusses its Board Operations Division. Find out who they are and what they do to help keep the PTAB running. The webinar will cover the division’s duties, which include paneling cases, managing hearings, and performing paralegal tasks.  The usual question-and-answer session will follow the presentation.

Register (here)

Questions may be sent in advance or during the webinar to PTABBoardsideChat@USPTO.gov.

The event is free and open to all.

Reasonably Could Have Investigated in PGR?

Last month the Federal Circuit recalibrated the scope of IPR estoppel by overruling Shaw Industries. That is, after the SCOTUS decision in SAS Institute, the Court concluded that IPR “raised or reasonably could have raised” estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all claims and grounds not in the IPR but which reasonably could have been included in the petition.

As to “reasonably could have been raised,” this assessment  considers what information was known to the filer, and when, or, what might have been uncovered via a reasonably diligent search.  In the case of a PGR proceeding — allowing a broader range of validity challenge types relative to IPR — this “reasonably could have raised” estoppel footprint poses a significant risk to patent challengers. Continue Reading PGR’s Scary Estoppel Footprint

Next Week’s CLE Agenda

For those seeking CLE this month, a number of great programs to consider in the coming weeks.

First up, the freebie 🙂

Next Tuesday, March 15th @ 1pm(EST) Gardella Grace presents the free one-hour webinar entitled In Possession of an Invention? Litigation Insights for Life Sciences Patent Drafting.  Presenters include patent prosecutor Dr. Patrick Halloran and litigators Cook Alciati and Michael Dorfman of Gardella Grace P.A.  The program will explore recent Federal Circuit decisions addressing the written description requirement in the life sciences field with an eye toward what the patent prosecutor can learn from contested proceedings addressing the written description requirement to stave off later litigation surprises.

Register (here) Login (here) – CLE Requested

Next, the non-freebies 🙁

Next Tuesday through Thursday, March 15th – 17th, the ever popular UTCLE Advanced Patent Law Institute returns as a webcast. The program will began at noon each day and adjourn at 4:25PM(EST).  The program will include a host of patent related topics on Tuesday and Wednesday, Thursday will provide PTAB specific panels on Thursday, finishing up in a CAFC panel that includes circuit court judges Linn, Chen and Stoll.

Register (here)

Also, this month, if you thought Comic-con was nerdy, you aint seen nothing yet!

The 2022 PTAB Bar Association Annual Meeting will be held March 23-25th – in person in Washington DC!  The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, recent developments and trends, policy considerations, and much more.  (People dressed as anime characters get in for free….try it).

Register (here)

High Value Disputes Spawning Wild-West Antics

I previously explained how Fintiv discretionary practices had spawned a new, cottage industry.  That is, with fully developed PTAB petitions being available to the public — denied only as a matter of discretion unique to the original filer— profiteers formed to simply refile such petitions.  The apparent goal being to leverage the publicly available petition materials where high-value verdicts had been subsequently secured on the subject patent.  With IPR institution leverage (or threat thereof) co-pending with a high-value verdict, this business model presumes that a patent owner would be open to a quick cash settlement.

One such profiteer, a company identifying itself as “Open Sky Industries,” recently leveraged early petition materials of Intel that pertained to its patent dispute with VLSI.  That dispute went to trial in the district court after Intel’s IPR petitions were denied under Fintiv.  At trial, a $2 billion+ verdict was entered.  Thereafter, Open Sky was successful in refiling Intel’s IPR materials, getting trials instituted on the subject patents with little to no cost or investment of its own.  The propriety of such re-filing practices is subject to an outstanding POP panel request.

If the optics of this practice weren’t bad enough for the PTAB….it has just gotten worse. Continue Reading PTAB Needs to Immediately Check Unethical Practices

Dispute Over Reexamination Vacatur Sent Back to VA Court

The recent trend of denying PTAB trial petitions on discretionary grounds has been argued to frustrate the purpose of the America Invents Act (AIA).  Indeed, patent reexamination filings — the clunky mechanism the AIA was supposed to supplant — surged by 60+% last year.  With stakeholders unhappy with how the PTAB is operating, interesting questions are being raised on when/how a reexamination remains viable after a failed AIA trial petition.

Last year, the Federal Circuit considered the timing of a Patent Owner 325(d) challenge to a follow-on reexamination after a failed IPR petition. This week, the Federal Circuit considered whether a petitioner that has been denied a reexamination can seek further review via an APA action of the district court. Continue Reading Reexamination Denial Subject to APA Judicial Review

Federal Circuit Overrules Previous Decision in Shaw Industries

Prior to the SCOTUS decision in SAS Institute, partial trial institutions were not uncommon.  Whether a proposed trial ground was found “redundant,” and excluded from trial, for example, created a strange estoppel calculus as to what “reasonably could have been raised” in that context.  That is, when a ground was raised, and was administratively barred from trial, how could estoppel be found as to that ground?

The short answer:  it wasn’t.  That was the decision of the Federal Circuit in Shaw Industries.

Since Shaw, partial institutions were barred by the Supreme Court in SAS Institute, which found all claims and grounds must move to trial if one claim is found reasonably likely to be found unpatentable.  Last week, the Federal Circuit finally had an opportunity to revisit Shaw. Continue Reading CAFC Clarifies IPR Estoppel Post-SAS Institute

Different Filing Dates Accorded to Petitions Filed on the Same Day

One of the more annoying aspects of PTAB practice is the variability in the agency’s issuance of Filing Date Notices.  In some cases, the Notice — an agency paralegal function — can come within a week or two of filing a petition (as it should), while in others, weeks later.  Since a Patent Owner’s Preliminary Response is due three months from the date of the Notice, different dates across related petitions can create a problematic misalignment in schedules.

Last week, the Federal Circuit considered whether 315(e)(1) estoppel can terminate one of two petitions filed on the same day, where one is decided earlier than the other as a simple result of a difference in schedules. Continue Reading PTAB Paralegal Delay Dooms Parallel Petition

Federal Circuit Reverses Newest Member

The concept of excluding the PTAB via a forum selection clause is not a new idea.  Back in 2019 I highlighted this option as the #1 development in PTAB practice for district court litigators.  Since that time, there have been a handful of cases that sought to leverage this mechanism. Earlier this week, the Federal Circuit was given another opportunity to explore this topic, and the potential policy consequences of such private agreements. Continue Reading Shutting Out the PTAB Via Private Agreement