Exceptional Cases & The PTAB

As discussed last month, as PTAB proceedings conclude at the Federal Circuit and return to the district courts, courts are finding themselves faced with new questions on estoppel. Another question that has been recently posed for successful PTAB challenges is whether, and to what extent, a prevailing party in an “exceptional” case (35 U.S.C. § 285) can obtain fees for work done at the PTAB?

Once again, the answer may depend on the particular district court. Continue Reading Recoverability of PTAB Fees in Exceptional Cases

Precedential & Informative Decision Update Today

The Patent Trial and Appeal Board (PTAB) will host a Boardside Chat webinar today, from noon to 1pm (EST). Vice Chief Judge Scott Weidenfeller, Judge Kevin Cherry, and Judge Amanda Weiker will discuss PTAB decisions designated over the summer as precedential and informative.

The PTAB held a similar webinar last spring to discuss cases designated as of that time. This webinar will pick up from where the last one left off. (access the webinar here)

The webinar is free and open to all. There will be a Q&A session at the end of the presentation. As always, questions may be emailed in advance or during the webinar to PTABBoardsideChat@uspto.gov.

Bill Delayed for Stakeholder Feedback

With June’s flurry of Senate hearings on the subject of patentable subject matter (i.e., 35 U.S.C. § 101), the previously announced plan was to release a draft reform bill in July. The draft was to be based on the outline of the framework discussed in the earlier hearings. Of course, July came and went without a bill as sponsors struggled with, among other issues, the functional claiming control (112 provision) included in the proposed framework. (Critics argued, incorrectly, that the 112 provision would somehow impact every patent).

Since that time, the leaders of the Senate subcommittee on intellectual property, Senators Coons (D-DE) and Tillis (R-SC) have conducted further stakeholder roundtable meetings to discuss their revised draft, intending to release a draft bill sometime this month.  Given the influx of campaign contributions to Sens Coons and Tillis (Pharma PACs in particular), and both senators being up for reelection in 2020, one can expect the 101 reform effort to remain on the front-burner.

Stay tuned.

RPI/Privy Disputes Become More Complex + PLI PTAB Trials 2019

As we move into the fall season, a host of bar association programs are on the horizon from IPO, AIPLA and others.  But first, a few options for PTAB focused CLE in September. The PatensPostGrant.com webinar series returns from summer hiatus, and the longest running and most widely attended PTAB CLE program, PLI’s full-day PTAB trials program returns to NYC. Continue Reading September PTAB CLE

Precedential Opinion Panel Reverses Decision on 315(b)

Earlier this year the Patent Trial & Appeal Board (PTAB) instituted trial in Sling TV, L.L.C. et al. v. Realtime Adaptive Streaming, LLC, IPR2018-01331, Paper 9 (PTAB January 31, 2019). In doing so it created a new exception to the 315(b) time bar. The exception explained that the trigger for 315(b) — service of the complaint — was ineffective if the true patent owner was not responsible for the filing.

At the time, I questioned whether this exception made sense given that exclusive licensees commonly assert patents. And, the statutory language and legislative history did not seem to support such a narrow interpretation.  The Precedential Opinion Panel (POP) decided the issue last week in GoPro, Inc. v. 360Heros, Inc., (IPR2018-01754).

The POP agreed. Continue Reading No Exceptions to PTAB Time Bar

“Known or Used” Not a Side-Step to PTAB Estoppel

Keeping with yesterday’s discussion of Patent Trial & Appeal Board (PTAB) estoppel in the district courts, a decision from earlier this year on yet another aspect of this estoppel has been recalibrated. Back in January, the Central District of California explained in The California Institute of Technology v. Broadcom Limited, et al., that IPR estoppel (35 U.S.C. § 315(e)(2)) applies where the same IPR reference is later raised in court under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a) instead of as a “patent or printed publication” as done in the IPR.

Upon Motion for reconsideration, the Court has agreed that it’s earlier Order required further clarification. Continue Reading Courts Continue to Explore Reach of PTAB Estoppel & Standards for Assessing Exceptions

User Manuals & Corresponding Product Estoppel under 315(e)(2)

District courts continue to grapple with whether or not physical products described by prior art publications of an earlier Patent Trial & Appeal Board (PTAB) trial are subject to estoppel. That is, by virtue of utilizing product manuals in the earlier PTAB proceeding, whether the actual products described “were raised, or reasonably could have been raised” under 35 U.S.C. § 315(e)(2).

The view of some districts has been that it does not, unless the Patent Owner (estoppel proponent) demonstrates that the product described in the previously examined manual is technically superior to the manual teachings. Yet, other districts are adopting an absolute prohibition.. Continue Reading Physical Counterparts of PTAB Utilized Product Manuals Estopped in Some Districts

Thursday: AIA Hearings and Ex Parte PTAB Appeals

The Patent Trial and Appeal Board (PTAB) will host a Boardside Chat webinar this Thursday, August 22, from noon to 1 p.m. ET about hearings, including both ex parte appeal and AIA hearings. Chief Clerk Erica Swift and Deputy Clerk Kulunie Cannon will present. Topics will include PTAB’s Hearings Guide (a little known document found here), new options for hearings, and recent updates to PTAB’s hearing rooms.

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

Issue Joinder on the Way Out?

As discussed some months back, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) decided its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)  In this decision, the POP held that 35 U.S.C. § 315(c) provides discretion to allow a petitioner to be “joined” to a proceeding in which it is already a party, and provides discretion to allow joinder of new issues into an existing proceeding (here).

This practice, known as “issue joinder” is now before the Federal Circuit. And, the Court does not appear receptive to the agency’s statutory interpretation. Continue Reading CAFC Poised to Strike Down PTAB’s First POP Decision

Precedential Opinions & Trial Guide?

The Federal Circuit’s en banc opinion in In re Aqua Products was as massive as it was unfulfilling. This was due, in part, to the court’s struggle with how to weigh policy of the agency that was not based upon the traditional notice-and-comment rule making of the Administrative Procedure Act (APA). Given the significant hurdles in issuing such rules (especially under the Trump administration’s 2-for-1 cancellation requirements) it is certainly understandable that an increasing amount of the agency’s guidance on AIA trial practice is provided by way of precedential Board decisions, and such documents as the Trial Practice Guide.

Yet, when the public is held to standards that were not promulgated in accordance with traditional APA practices, the Federal Circuit is left to decide what if any deference should be applied to such policies. Continue Reading Precedential PTAB Opinions to Drive APA Challenges