Recapture, Orita Doctrine & Same Invention Limit Scope

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a Patent Owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution — not even when broadening. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same public reliance policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents Patent Owners from obtaining by reissue, restricted claims that were never pursued.

This week, the Federal Circuit revisited a further limit on broadening patent reissues it last addressed in 2014. Continue Reading Broadening Reissue Patents Have Limits

Legislation & Continued Judicial Feedback

There have been a number of developments in the courts, at the USPTO, and on the legislative side over the past few months. These developments, some of which have been discussed here at length — such as the 101 legislative effort — will continue to drive new patent strategies and concerns in the months ahead.  Some quick thoughts, predictions, and some odds and ends as we head into the slower summer months.

  • On the 101, side, the proposed legislative framework will be refined over the next few weeks in response to feedback collected from the marathon hearings of a week ago. Senator Coons has promised a revised draft after the July 4th recess. You can expect to see that revision sometime in the month of July (before the Summer Recess (August)).  Revisions will likely include some degree of definition for “technology” as presently defined in the bill, timing provisions on when the 101 and 112 changes would take effect once enacted (i.e., prospective or not), and perhaps a codification of obviousness-type double patenting. I do expect that a 101 bill will be enacted by year-end (barring impeachment, or other time consuming, legislative adventures)
  • On the Supreme Court side, Article III standing to the CAFC was denied cert in RPX Corp. v. ChanBond, and we saw a decision in Return Mail Inc. v. United States Postal Service (here) I have largely ignored Return Mail here. Aside from the academic interest of whether the government can be a “person,” this case has little practical effect on PTAB practice. With 1-2 government filings per year, on average, it is just not that interesting for practitioners. That said, vendors of the government lodging such filings concurrent with a Court of Claims dispute should expect a privity argument headed their way.
  • Speaking of privity, there have been a number of recent PTAB decisions addressing such relationships. Be careful…it’s going to get much hairier for joint defendants and customer/supplier relationships.
  • Collateral estoppel from adverse PTAB rulings is becoming a problem for patent owners trying to manage multiple, inconsistent appeals. Papst Licensing GmbH v. Samsung Elec. America, Inc.(here)  Or, patent owners trying to return to court on claims that re indistinguishable to cancelled claims.  Intellectual Ventures I, LLC v. Lenovo Group Ltd., 
  • The Federal Circuit denied state sovereign immunity from PTAB proceedings, not surprisingly, following its earlier decision on tribal Immunity. Regents of the Univ. of Minn. v. LSI Corp. et al. (here)
  • At the Patent Trial & Appeal Board (PTAB) a few POP decisions are expected very soon on important matters of printed publications, and 315(b). Additional precedent is also expected on the agency’s new 101 and 112 guidelines.  Finally, last week saw the first use of the PTAB’s new Amendment Pilot.

As usual, a busy few months ahead.

Interactions During Preliminary Proceeding Can Doom PTAB Filing

Since last summer’s decisions in Applications in Internet Time, LLC v. RPX Corp., and Worlds Inc. v. Bungie, Inc., the Patent Trial & Appeal Board (PTAB) has seen RPI/privity disputes spring back to the fore. The renewed scrutiny presents challenges for petitioners participating in joint defense groups or those obligated under indemnification agreements.

A precedential decision issued today by the Federal Circuit highlights the danger of new RPI and privy interactions post-petition filing.  Continue Reading Post-filing Conduct Impacts PTAB RPI/Privity Determinations June Webinar

June 19 marks the 5th anniversary of the Supreme Court’s impactful decision in Alice Corp. v. CLS Bank, which dramatically changed the analysis of patentable subject matter in both patent prosecution and patent litigation.

Currently, a bipartisan group of Congressional members introduced what could be the first revisions to Section 101 of the Patent Act in nearly 70 years. Over the last few days, Congress has held multiple hearings on the issue, with dozens of witnesses testifying on the impact this proposed legislation could have on industries ranging from tech to biopharma.

In the June webinar we will discuss the USPTO’s revised 101 guidelines, the scope of the proposed legislation, its chances for passage, and the actions that patent owners and potential defendants may want to take to minimize the uncertainty that comes with potential legislative action

Please join me for an interactive webinar discussion on the 101 reform initiatives next Monday June 17th@2PM (EST). Register (here).

My co-presenter for this webinar will be Matt Rizzolo, a partner in Ropes & Gray’s IP Litigation Practice.

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period.

To attend the free webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Plan Ahead for 101 Change

With the Senate conducting marathon hearings on the subject of patentable subject matter this week (i.e., 35 U.S.C. § 101), and with significant effort to date to move legislation forward, it appears that 101 change is coming — and soon.

Given the imminent legislative reset, what should you do if your patent is invalidated by the Court’s under the current 101 regime? Continue Reading Preparing for 101 Change: Preserving Future Arguments

Senate Judiciary Hearings Start Next Week

The Senate Judiciary Committee will conduct back-to-back hearings next Tuesday and Wednesday entitled “The State of Patent Eligibility in America. The marathon fact-finding hearings come on the heels of the proposed 101 framework released last week. Each of the hearings will include three panels of five speakers.

Judging on the lineups for next week, so far the deck is plainly stacked pro-reform. Continue Reading Senate 101 Hearings Stacked in Favor of Reform

Proposed Framework Isn’t Just About Fixing 101

Since Wednesday’s release of a proposed 101 framework, some have mistakenly dismissed its legislative viability as failing to account for the interests of Big Tech — nothing could be further from the truth.

The proposal is the result of months of negotiations with the major patent stakeholders, most notably the Bio/Pharma and Tech lobbies. While the Bio/Pharma side would greatly benefit from a broadening of patent eligibility (such as proposed) to more readily secure patent protection for technologies such as medical diagnostics, the Tech Lobby has largely opposed such as it leverages 101 to fight back against abstract patent claims. To bridge this divide, the framework presents a narrowing provision that will primarily impact the claim scope of patents asserted against Tech. Continue Reading 101 Legislative Proposal Includes Provision to Narrow Functional Claims

Redundant Grounds Not An Efficient Administration of Justice

Last month, the Patent Trial & Appeal Board (PTAB) issued an Order explaining that maintaining multiple, concurrent proceedings per patent presents a significant burden for the Board.  More specifically, where the same claims are challenged across multiple, redundant petitions (i.e., pile-on), the Board pointed out that instituting trial across all redundant filings may undermine the Office’s ability to complete proceedings in a timely manner and places an unfair burden on the Patent Owner. 35 U.S.C. § 314(a).

That petition filer, which has filed numerous redundant petitions across a large patent portfolio, is now seeing the first of its redundant petitions being denied.

Continue Reading PTAB Begins to Deny Pile-On Petitions from Same Petitioner

Draft Framework Released

As previously discussed, Congress is poised to revise the law of patent eligibility under 35 U.S.C. § 101.  To this end, a draft framework has been floated in advance of three upcoming stakeholder meetings on the Hill (June 4th, 5th and 11th).

Today, U.S. Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property, and Representatvie Doug Collins (R-GA-9), Ranking Member of the House Judiciary Committee, Hank Johnson (D-GA-4), Chairman of the House Judiciary Subommittee on Intellectual Property and the Courts, and Steve Stivers (R-OH-15) released a bipartisan, bicameral draft bill that would reform Section 101 of the Patent Act. Continue Reading Congress Floats Draft Bill Outlining New 101 Framework

Rehearing Cites Lack of Countervailing Public Policy Against PTAB Review

Last month the Federal Circuit decided Dodocase VR, Inc. v. Merchsource, LLC (here). In Dodocase the Federal Circuit held that a standard forum selection clause can divest the PTAB of AIA trial jurisdiction.

If maintained, the ability to avoid the Patent Trial & Appeal Board (PTAB) by private agreement would prove a game changer in periodic licensing agreements between competitors, including SEP licensors.

But, earlier this week, en banc rehearing was sought. Continue Reading CAFC Urged to Rehear PTAB Forum Selection Dispute