Roughly 10% of AIA Proceedings Involve Amendments

Earlier this week the Patent Trial & Appeal Board (PTAB) released the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.  Not surprisingly, this installment doesn’t look much different than previous ones.  Amendment remains unpopular at the Board for strategic reasons, and those Patent Owners that do attempt amendment are rarely successful.

While the 6th installment preview early results on the Amendment Pilot, it does not present success rates (which to date, are no better then the old program – also, not a surprise). While there was an initial flurry of Patent Owners opting for the Pilot program, that initial amendment popularity has waned. Continue Reading PTAB Amendment Study Shows More of the Same

New Informative Decisions Applying Fintiv Factors

Today, the Patent Trial & Appeal Bord designated two decisions informative that apply the so-called “Fintiv factors.”

Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020) (informative)

This decision denies institution upon applying the factors set forth in the precedential Order of the same dispute,  Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (the “Fintiv factors”) when the trial is scheduled to begin two months before the due date for the final written decision, the district court has invested in the validity issues, there is a substantial overlap in the patentability challenges, and the petition is not strong on the merits.

Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 (June 16, 2020) (informative)

This decision institutes an inter partes review (IPR) upon applying the Fintiv factors when it is uncertain whether the trial will take place before the final written decision, the district court has not made a significant investment in the validity issues, the petitioner stipulated not to raise in the district court the same patentability grounds raised in the IPR, and the petition is strong on the merits.

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New Pilot Will Not Accelerate Post-Grant Matters

Last week the United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The program, entitled “Fast-Track Appeals Pilot Program” launched July 2, 2020. (here)

But, the program may not benefit all appellants.  And it is important to understand that the program is not offering an appeal timeline (start to finish) that spans 6 months. Continue Reading PTAB Fast-Track…Not So Fast

Federal Government Seeks Cert on Appointments Clause & Forfeiture Issues

On June 25th, the federal government filed a petition (here) for certiorari asking the Supreme Court to review the CAFC’s decisions in both Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019) and Polaris Innovations Ltd. v. Kingston Tech. Co., Inc., No. 2018-1831 (Fed. Cir. Jan. 31, 2020).  This petition comes as no surprise after the CAFC’s fractured denial of an en banc Arthrex rehearing.

The Court has had occasion to consider Appointments Clause issues several times in recent years, most notably in Lucia v. SEC (2018), and again touching upon the issue last week in Seila Law LLC v. CFPB. 

Is there a SCOTUS appetite for the gov’t’s issues? Continue Reading PTAB Appointments Clause Debate: SCOTUS Preview

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House and Senate Judiciary Committees Alerted to “Significant and Rapidly Growing Problem”

Earlier this month, a coalition of stakeholder organizations sent letters to the House and Senate Judiciary Committees seeking an investigation into the Patent Trial & Appeal Board’s (PTAB) application of discretion under 35 U.S.C. § 314(a).  More particularly, the organizations argue that the Board’s application of NHK Spring is “choking off access” to the PTAB and leading to a resurgence in patent litigation of questionable merit. The organizations ask that the USPTO report to Congress on these practices, and engage in formal rulemaking to guide agency practices.

Whether the requested action is provided or not, the continued application of 314(a) in the NHK context seems destined to end. Continue Reading Congress Urged to Investigate PTAB Discretionary Denials

PTAB Webinar 12-1PM (EST) Today

Earlier this year, the USPTO launched the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP). LEAP is designed to foster development of the next generation of patent practitioners by creating opportunities to gain the proper skills and experience in oral arguments before the Board.

To this end, the PTAB is offering a LEAP webinar directed to oral advocacy today, Thursday, June 25th, from noon to 1 p.m. ET.

LEAP is designed to encourage the professional development of patent attorneys and agents appearing before the PTAB through increased opportunities for oral advocacy in ex parte appeal and AIA trial proceedings. Accordingly, the PTAB will grant up to 15 minutes additional argument time to parties that choose to participate in LEAP, depending on the length of the proceeding and the PTAB’s hearing schedule.

The training will cover topics such as use of demonstratives, effective use of hearing time, decorum, and logistics of an oral hearing.  Judges Amanda Wieker and Christa Zado will present.

The webinar is free and open to all. There will be a Q&A session at the end.

Questions may be in advance or during the webinar to LEAP@uspto.gov. Webinar access information is found (here).

Board Acknowledges Slipping WDTX Trial Date

Some weeks back I highlighted the institution decision in Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393), which held that despite most General Plastic Factors favoring institution, the majority felt as though a looming WDTX trial date trumped all other GP factors and denied institution.  After petitioner’s unsuccessful request for a Precedential Opinion Panel (POP) hearing, the Board ordered additional briefing.

Today, the Board reversed course instituting the Sand Revolution IPR.  In the process, the Board provided some insight into slipping WDTX trial dates and steps petitioners can take to help avoid discretionary denials of parallel AIA trial petitions. Continue Reading PTAB Reverses Discretionary Denial Based on WDTX Trial

Precedent Explains Expansive Scope of 35 U.S.C. § 317(b)

The Patent Trial & Appeal Board (PTAB) issued a new precedential opinion, and three new informative decisions yesterday. The precedent clarifies the agency’s read of 35 U.S.C. § 317(b) for instituted proceedings. Arguably, this precedent does not apply to pre-institution as 317(b) is limited to instituted proceedings.

The informative decisions relate to fairly straightforward issues.

DTN, LLC v. Farms Technology, LLC, IPR2018-01412, Paper 21 (June 14, 2019) (precedential)(here)

This decision terminates the proceeding due to settlement and denies a joint request to expunge collateral agreements referenced in the settlement agreement. The decision determines that collateral agreements do not need to be between the patent owner and the petitioner and do not need to be made in connection with, or in contemplation of, terminating an IPR to fall within the scope of 35 U.S.C. § 317(b).

Sattler Tech Corp. v. Humancentric Ventures, LLC, PGR2019-00030, Paper 9 (July 26, 2019) (informative)(here)

This decision institutes a post-grant review proceeding for a design patent after finding the petitioner showed it was more likely than not that the claimed portions of the design were primarily functional, not ornamental.

Kokusai Electric Corp. v. ASM IP Holding B.V., IPR2018-01151, Paper 38 (Aug. 20, 2019) (informative)(here)

This order terminates the proceeding due to settlement without reaching a decision on the patent owner’s motion to amend, explaining that the patent owner may pursue the claims in a reissue or reexamination proceeding.

Curt G. Joa, Inc. v. Fameccanica.data S.P.A., IPR2016-00906, Paper 61 (June 20, 2017) (informative)(here)

This decision provides guidance as to the use of confidential information during an oral hearing.

Boardside Chat this Week

The Patent Trial & Appeal Board (PTAB) will conduct a “Boardside Chat” this Thursday, June 11, from noon to 1 pm (EST) to address a  number of topics including: new statistics on institution rates/final written decisions, and potential changes to AIA trial rules on institution and responsive briefing. Vice Chief Judge Mike Tierney and Lead Judge Bill Saindon will present. (access here)

The webinar is free and open to all. There will be a Q&A session at the end. Questions may be sent in advance or during the webinar to PTABBoardsideChat@uspto.gov