Review of APJ Appointments to Be Considered by SCOTUS

Back in November of 2019 the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the Federal Circuit solution pronounced in Arthrex was effective to cure the Appointments Clause defect.  While there was some debate over whether the “fix” would hold, all of the witnesses were unanimous in that Congress, could, and should, fix the issue in the short term.

Today, Arthrex was granted cert.  I expect that Congress will now turn back to their earlier discussed legislative fix. Continue Reading Arthrex Cert Likely to Spur Previously Discussed Legislative Fix

Joinder Estoppel Narrower Than Original Petition Estoppel

Court’s have struggled with the meaning of the “reasonably could have raised” aspect of 315(e)(2) IPR estoppel. The CAFC has not had much opportunity to weigh in on this issue…. yet. But, last week the Court provided guidance on what is “reasonably raised” when a party joins an IPR petition under § 315(c).  Based on the Court’s decision, joinder may become a more attractive option for co-defendants in multi party litigations. Continue Reading PTAB Joinder Provides Estoppel Benefit

PTAB Seeks Public Input

Based on stakeholder feedback, the Patent Trial and Appeal Board (PTAB) has added an online form (here) to the USPTO website that allows any member of the public to nominate any PTAB decision for precedential or informative designation.

Those nominating a decision must provide a case number, case name, and brief reasons for the nomination. They may optionally provide their name and email address. The online form is also accessible on the PTAB’s Precedential and informative decisions page of the USPTO website. The agency has consistently solicited feedback from the public on such designations, and the new interface is designed to encourage such submissions.

Virtual PTAB Conference Offers Master Class & Boot Camp Programs Tomorrow

Tomorrow, the PTAB Bar Association will hold its annual conference. 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 more. (This year, like all conferences, the program will be offered virtually).

The 3-day conference will cover agency developments, administrative law practices, and a host of PTAB specific strategies, and best practices. The program includes a Boot Camp segment for new practitioners, and a Master Class for more experienced practitioners. Other highlights include panel of administrative patent judges of the PTAB, as well as a segment on CAFC practices, including Chief Judge Prost, Judge Newman and Judge Stoll. (full agenda here)

I am pleased to be moderating the Master Class session on Wednesday, September 23rd. The Master Class is an innovative workshop program exploring complex and strategic decisions in AIA trial proceedings where there may be many “right” answers . . . depending on the facts.  Veteran lawyers will discuss how they approach difficult situations to give their clients an edge, and PTAB judges will offer their insights and perspectives.

I hope to see you (virtually) at one of these great programs (register here)

Transitional CBM Challenge Program Sunsets Today

The America Invents Act (AIA) placed an expiration date on Covered Business Method (CBM) challenges.  That is, CBM review proceedings were designed as a “transitional program” that would sunset 8 years from enactment of the AIA – today is that day.

The legislative rationale behind setting an expiration for CBM was to target specific patents, namely, those  business method patents that issued between the State Street Bank, and Bilski decisions.  These patents were considered to be largely invalid under 35 U.S.C. § 101 having been issued under the more liberal 101 standard of State Street, and, providing a USPTO option for such 101 challenges was argued by the financial industry as the most efficient and cost effective path to resolution (as compared to the litigation of such issues by non-traditional patent defendants).

But, has the CBM program succeeded in neutralizing this alleged blip of invalid business method patents? If not, what is being done to potentially extend the program? Continue Reading CBM Sunsets at the PTAB….For Now

CAFC Holds PTAB Joinder Decisions Reviewable

Back in March, the Windy City panel (Prost, Plager, and O’Malley) originally held that § 315(c) was unambiguous that an existing “party” to a PTAB proceeding cannot be joined as a party.  Thereafter, the SCOTUS considered the scope of the PTAB appeal bar in its Thryv decision, holding that potential violations of § 315(b) were too closely related to the institution determination of the agency to escape § 314(d)’s appeal bar.

Last week, in view of Thryv, the Federal Circuit modified its opinion in Facebook, Inc. v. Windy City Innovations, LLC to make clear that joinder issues were outside of the appeal bar. Continue Reading CAFC Finds PTAB Joinder Appealable After All

Amendment of § 256 Removed Previous Prohibition on Deceptive Intent

With the AIA, Congress amended § 256 to remove the requirement that the “error” of omitting an inventor from a patent must occur without “deceptive intention.”  That is not to say that such a deceptive intention would be free from an inequitable conduct charge, but, at least for purposes of the administrative correction, intent is no longer a consideration of the agency.

Few cases have explored the impact of this amendment, until Egenera, Inc. v. Cisco Systems, Inc, which held the correction —and unraveling of the same correction —is not prevented by the amended statute. Continue Reading AIA Change Allows for Deceptive Patent Corrections

Longest Running PTAB Program Returns Next Week (Live Webcast)!

This coming Wednesday, September 9th brings the return of Practising Law Institute’s Advanced PTAB Trial Strategies.

This year the program will focus on a half-day of advanced topics beginning at 9AM (EST), but in its usual interactive format.  This year’s high-level focus is designed to go well beyond the basics to explore emerging practice trends, discuss overlapping litigation strategies/concerns, and analyze advanced trial tactics for petitioners and patent owners alike.  From the changing political winds driving precedent and agency policies, to in-the-trenches feedback, this program will deliver significant value to PTAB practitioners and in-house counsel.  (West Coast registrants will be able to watch the program on-demand rather than getting up at 6AM 🙂 )

The half-day schedule provides:

  • Advanced PTAB Trial Grounds: Petition Drafting, Support & Strategy, Patent Owner Evidence, Counter-Arguments/Strategy
  • Navigating Critical PTAB Procedures: Depositions, Amending & Motions
  • Administrative Trial Advocacy in PTAB Patent Proceedings: Oral Argument, Briefing, Technical Audiences, Standards of Review

I am pleased to be returning as co-chair alongside Robert Greene Sterne of the Sterne Kessler firm. Register (here)

PTAB Invalidation of Original Claims Bars Pre-issue Damages for Reissued Claims

A surprisingly underutilized patenting mechanism — the reissue patent application — should be an essential component of any portfolio building practice.  The reissue application allows patent owners to correct/adjust claim scope (in some cases broaden), add additional claims, and perform a number of other corrections to an originally issued patent prior to asserting it.

For example, where a Patent Owner has its claims cancelled that the PTAB, the Patent Owner may seek to reissue its patent thereafter with new, narrower claims.  (This option may be more attractive than the PTAB’s amendment process, which is limited in the number of claims that may be raised, and, reissue is not an inter partes process).

But, reissue is not  a magic time machine. That is, trying to resurrect a damages case linked to your earlier cancelled claims by arguing that your narrowed, reissue claims are somehow the same scope, is a losing argument (not surprisingly) Continue Reading Reissue Claims Substantially Identical to Invalidated Claims Ensnared by Collateral Estoppel

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APA Action & Mandamus Petition Simultaneously Challenge PTAB’s NHK/Fintiv Framework

Back in June, I predicted that an APA action against the USPTO and/or a mandamus petition to the Federal Circuit was inevitable given the PTAB’s practice of denying IPR petitions in favor of competing district court trial dates. Well…here we are.

Yesterday,  Director Iancu was sued by a group of large tech companies for allegedly violating the APA by denying IPR petitions on the basis of a competing trial date, and late last week, one of the same companies also filed a mandamus petition seeking to force the agency to consider the merits of a petition denied as a matter of discretion even though it was filed some seven months before the 315(b) deadline.

Never a dull moment at the PTAB. Continue Reading USPTO Sued Over Discretionary Denials