I love to create bokeh from colorful things. This was taken from some colorful glasses.
Shabu Anower, Unsplash
New Chief & Deputy Chief to Speak Thursday

The Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar this Thursday, April 4th from noon to 1pm(EST). The webinar will introduce new Chief Judge Scott Boalick and Deputy Chief Judge Jackie Bonilla. The judges will discuss recent precedential and informative decisions issued by the PTAB. These decisions concern motions to amend, use of live testimony at AIA trials, same party joinder, and subject matter eligibility.

More information, including the webinar access information, is available on the PTAB “Boardside Chat” webinar series webpage of the USPTO website.

The webinar is free and open to all. 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.

Continuous Diligence Not Required

Although the United States has been a first-inventor-to-file patent system since March 16th 2013, the patents of the previous first-to-invent system will linger for many years to come. For those patents, the ability to “swear behind” prior art will remain.

Under pre-AIA §102(g), when two persons invent the same invention, for the latter inventor to be entitled to the patent, she must demonstrate that she (1) was the first to conceive of the invention and (2) was reasonably diligent in reducing it to practice. The Federal Circuit recently ruled on what, exactly, “reasonable diligence” entails at the Patent Trial & Appeal Board (PTAB) in Arctic Cat Inc. v. GEP Power Products, Inc. (here) Continue Reading Reasonable Diligence & Antedating Evidence

Commission Awaits PTAB Result – Sometimes

Under Section 337 of the Tariff Act of 1930, the International Trade Commission (ITC) is required to conclude its investigations and make determinations “at the earliest practicable time.” 19 U.S.C. § 1337(b)(1). This mandate for speed in ITC proceedings drives the Commission forward despite parallel Patent Trial & Appeal Board (PTAB) proceedings. The fact that the ITC, unlike district courts, cannot award monetary relief only contributes further to the Commission’s aversion to stays pending PTAB review.

Increasingly, however, PTAB proceedings concluding prior to enforcement, are catching the eye of the Commission. In such scenarios, an adverse PTAB ruling against a subject patent can result in a suspension of enforcement.

Continue Reading PTAB Speed vs. ITC Speed

American University Washington College of Law, Federal Circuit Bar Assoc., & Unified Patents Host PALC 2019

For those in the Washington D.C. area, this coming Wednesday the American University (AU) Washington College of Law hosts the Ninth Annual Patent Administrative Law Conference. Topics this year include “A New Day at the PTAB”, and emerging issues in wireless standards and patent pools. Speakers this year are drawn from from the Dept. of Justice, USPTO, private practice and a broad spectrum of in-house counsel.

You can find the full agenda and registration info (here).  Hope to see you there.

Previous PTAB Opinions Designated Precedential

Yesterday, the Patent Trial & Appeal Board (PTAB) designated two older AIA trial decisions, and one recent decision, precedential. These three decisions follow last week’s Precedential Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, which held issue joinder was embraced by 35 U.S.C. § 315(c), but a matter of Board discretion.

Since the revision of its Standard Operating Procedure (SOP) for designating precedential and informative decisions (SOP2), it is expected that the Board will continue to expand upon the current number of precedential decisions. Continue Reading PTAB Ramps Up Issuance of AIA Trial Precedent

PLI Program to Focus on New Patent Owner Opportunities

The USPTO’s Patent Trial and Appeal Board (PTAB) is in the midst of a historic makeover. New leadership has recently introduced significant changes. These changes are designed to rebalance AIA trial practices to allow patent owners a fighting chance. From new claim construction standards, amendment options, revised 101 guidelines, expanded equitable assessments under 314(a), the game has changed.

Please join me today at 3PM (EST) for the Practising Law Institute’s: Getting Your Patent Out of the PTAB: New Opportunities. This program will explore new best practices and address how to leverage the evolving PTAB landscape, including new petitioner risks, patent owner opportunities and changes to come.

I am pleased to once again team with Rob Sterne of Sterne Kessler Goldstein and Fox on this PLI program. Register (here)

PTAB Amendment Pilot Effective Today

Today, the Patent Trial & Appeal Board (PTAB) published the final Pilot Program for Motions to Amend in the Federal Register (here). The Pilot will run for one year, and is applicable to all AIA trial proceedings instituted going forward. (i.e., proceedings instituted before 3/15 are ineligible). The published Pilot carries forward the main idea of the initial RFC — feedback to the Patent Owner on its Motion to Amend prior to final decision — but, offers notable revisions in procedural timing and options as compared to the RFC.

As revised, those Patent Owners inclined to amend before the PTAB, may find the Pilot to offer strategic advantages beyond mere feedback. Continue Reading Gaming the PTAB Amendment Pilot?

Issue Joinder Debate Comes Full Circle

As previously discussed, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) has considered its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)

The POP reversed the earlier (divided) panel decision in Proppant Express (which conflicted with the earlier consensus of Target Corp. v. Destination Maternity), holding that 35 U.S.C. § 315(c) permits issue joinder. More specifically, the POP held that 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).

That is, we are right back where we started in Target. Continue Reading New PTAB Precedent: Issue Joinder is Discretionary

Judge Scott Boalick Formally Appointed Chief

The United States Patent and Trademark Office (USPTO) announced today the appointment of Scott Boalick as Chief Judge for the Patent Trial and Appeal Board (PTAB). Boalick has served as the acting Chief Judge for the PTAB since September 2018. Boalick begins his permanent role today.

Boalick was appointed to the Board in 2007. Prior to becoming the acting chief judge, he served as an administrative patent judge, lead judge, vice chief judge, and deputy chief judge.

Also today, the USPTO announced that Jacqueline Bonilla has been appointed as the Deputy Chief Judge of the PTAB, having served as the acting deputy chief judge of the PTAB since September 2018. Bonilla will also begin her position today.

Plenty of March CLE Programs to Choose From

There are quite a few Patent Trial & Appeal Board (PTAB) related CLE events over the next few weeks.

First, today, the PatentsPostGrant March Webinar will cover Patent Derivation, Trade Secret Misappropriation & Inventorship Disputes @2PM (EST).  This program will cover the full breadth of considerations facing research heavy technologies (e.g., Bio/Pharma, semiconductor, etc) under the America Invents Act (AIA).

Register (here) 

Later this week, the 2019 PTAB Bar Association Annual Conference will come town on March 14 – 15, 2019, at the Ritz-Carlton in Washington, D.C. Pre-conference sessions will be offered March 13th. I’m honored to once again moderate the PTAB Master Class.  

You can view the full agenda and session descriptions (here).

For those not able to get to DC, next Monday, 3/18 @3PM the Practising Law Institute will host a webinar entitled: Getting Your Patent Out of the PTAB: New Opportunities. This program will explore new best practices and address how to leverage the evolving PTAB landscape, including new petitioner risks, patent owner opportunities and changes to come.

I am pleased to once again join with Rob Sterne of Sterne Kessler Goldstein and Fox on this PLI program. Register (here)

Finally, closing out the month of March, on Wednesday, March 27th, the American University Washington College of Law, Federal Circuit Bar Association, & Unified Patents Inc. present the Ninth Annual Patent Administrative Law Conference. The program will cover a host of hot topics including a panel on PTAB changes, and wireless standards and patent pools.

Register (here)

I hope you are available to join one of these upcoming events.