Apple Factors Added to NHK Mix

A few weeks back I highlighted the fact that the Patent Trial & Appeal Board (PTAB) was in the process of considering a more nuanced approach to NHK determinations.  That is, with a few Board decisions seemingly denying IPR trial institutions on the sole basis of a competing, and earlier district court trial date, the Board was considering whether its approach had become too rigid.

Today, the Board designated as precedential the supplemental briefing order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020), which lists six factors to be assessed in such scenarios. Continue Reading PTAB Adds Factors to Assess Import of Competing Trial Date

Denial of Institution Sinks Materiality Allegation

Inequitable conduct is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. The standard for inequitable conduct was recalibrated in Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011).  To prevail on the defense of inequitable conduct, an alleged infringer must demonstrate two elements—materiality and intent.  That is, demonstrate that the patent applicant misrepresented or omitted material information with the specific intent to deceive the PTO.  Materiality of information changed from the previous “reasonable examiner” standard to “but-for” materiality in Therasense.

Of course, the best way to prove such materiality is to demonstrate that the PTO is in the process of reconsidering its earlier decision based on this same prior art. Continue Reading Therasense “But For” Materiality Mooted by IPR Loss

Remands Held in Abeyance Until Arthrex Exhausts Appeals

Last Friday, the Chief Judge of the Patent Trial & Appeal Board (PTAB) issued a general order directed to the growing number of Arthrex remands, now totaling over 100 cases. The order (here) explains:

Several parties in Board matters that have been subject to [remand Orders] have informed the Office that they intend to seek review of the pertinent Order by the Supreme Court of the United States (“Supreme Court”). Meanwhile, in accordance with the Board’s Standard Operating Procedure 9 (“SOP 9”), parties are contacting the Board to schedule teleconferences with the appropriate Board panel in their proceeding. To avoid burdening the Office and the parties until all appellate rights have been exhausted, I exercise my discretion to: (1) suspend the requirements in SOP 9 in cases remanded by the Federal Circuit under Arthrex; and (2) hold all such cases in administrative abeyance until the Supreme Court acts on a petition for certiorari or the time for filing such petitions expires.

This Order will delay new hearings in these cases for the summer (if certiorari is ultimately  denied), or well into 2021 if the SCOTUS takes up the case.

IPO Chat Channel & AIPLA Virtual Spring Meeting Next Week

For those seeking CLE in the coming weeks, there are two programs on the immediate horizon.

First, next week kicks off the AIPLA’s Virtual Spring Meeting.  The program (spaced over two weeks) offers a host of IP related presentations, including Practice Tips and Procedural Developments at the PTAB on Tuesday May 5th from 12:30-2PM (EST).  Sub-topics include:

  • So the Federal Circuit Remanded Your Case Back to the PTAB; 
  • PTAB Opinions on Discretionary Institution; 
  • What You Need to Know about Recent Changes in AIA Trial Proceedings; and
  • Winning Strategies on What to Argue Before the PTAB.

Second, the IPO Chat Channel will host Defining the PTAB: Click to Call and Windy City next Thursday at  Thursday, May 7th, 2-3pm (EST) This program will explore the impact of new appellate realities in PTAB proceedings and the relevance of POP decisions in this new environment.

Patent & Trademark Due Dates Pushed to 6/1

Not surprisingly, the United States Patent and Trademark Office (USPTO) again extended the time to file certain patent and trademark-related documents and to pay certain required fees, which otherwise would have been due between March 27 and May 31, to June 1, 2020.  This is in addition to the prior extension the USPTO had announced on March 31, 2020 in accordance with the temporary authority provided by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).

The limited relief provided for PTAB trial proceedings under the March 31st notice ends on April 30th.  Relief sought thereafter will be determined on a case-by-case basis.

The recent notice also makes clear that to take advantage of the waiver of the petition to revive fee (announced on March 16th) that the abandonment, termination or limiting, must occur prior to May 31, 2020.

The patent notice is found (here) trademark notice (here).

LEAP Program Launches 5/15

Today, the USPTO officially 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. The USPTO explains that it understands “stand up” speaking opportunities before tribunals are limited and that gaining courtroom experience is advantageous for practitioners in their career development.

A LEAP practitioner is defined as someone who is new to the practice of law or new to practice before the PTAB.  To qualify as a LEAP practitioner, a patent agent or attorney must have three or fewer substantive oral arguments in any federal tribunal, including PTAB, and seven or fewer years of experience as a licensed attorney or agent.  Continue Reading PTAB Offers Expanded Oral Argument Times to New Attorneys

Webinar to Discuss Remote Hearings

This coming Friday, May 1st, the Patent Trial and Appeal Board (PTAB) will conduct a ‘Boardside Chat” webinar from noon to 1 p.m. ET.

The webinar will address logistics for virtual proceedings, public remote viewing of hearings, timing considerations for filings, and the CARES Act relief. Chief Judge Scott Boalick, Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Mike Tierney, and Acting Vice Chief Judge Michael Kim will present. (link here)

Given the current Cares Act accommodations expire at the end of the month, there should be an update from the agency some time before Friday on whether or not the current options will be extended through May.

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

Public Policy Role of PTAB Clashes with Assignor Estoppel Equities

The doctrine of assignor estoppel prevents prior owners/inventors of a patent from later challenging the patent’s validity.  Assignor estoppel’s premise is that the assignor “should not be permitted to sell something and later assert that what was sold is worthless, all to the detriment of the assignee.” Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1224 (Fed. Cir. 1988).

While exceptions to assignor estoppel have existed since its inception, the Federal Circuit has found that the AIA can be leveraged to circumvent the doctrine—that is, while a prior owner of a patent may not challenge the patent’s validity at district court, it may challenge the validity at the PTAB. Continue Reading Assignor Estoppel & the PTAB

SCOTUS Clarifies PTAB Institution Issues Not Subject to Appeal

Back In December I pointed out that the SCOTUS would likely tighten the PTAB appeal bar in Dex Media Inc. v. Click-To-Call Technologies, LP, explaining that, based on the oral argument, that several justices of the Court seemed to take the view that technical violations, such as 315(b) were too closely related to the institution determination of the agency.  For example, Justices Kagan and Ginsburg explained it would be “a little bit silly to go back to square one” and that there was “something unseemly about nullifying the determination on the merits.” (transcript here)

Today’s majority decision, authored by Justice Ginsburg, presented no surprises. Continue Reading PTAB Appeal Scope Recalibrated by SCOTUS

Additional Briefing Invited on Binary Application of NHK

Last week I pointed out that the litigation timing factor introduced by NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc., has effectively swallowed the entirety of the General Plastic factors in NHK scenarios. That is, in some recent Board decisions, institution has been declined in AIA Trial Proceedings on the sole basis that a district court litigation would reach trial first.  Given the AIA has its own timing mechanism, 35 U.S.C. § 315(b), and plaintiffs seeking to avoid the PTAB need only go to the WDTX (where NPEs tend to go anyway) to leverage this development, this is a troublesome development for the system.

In that same post, I pointed out that a request was made to the Precedential Opinion Panel (POP) to review the Board’s application of NHK (Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393). While that request was denied, the very next day, the panel in Sand Revolution ordered supplemental briefing on this important topic. Continue Reading PTAB to Take a More Nuanced Approach to NHK Determinations?