314(a) Practices Evolve

Discretionary denials of AIA trial petitions under 314(a) have fallen significantly over the past few months. But, Fintiv practices are not quite dead yet. As noted by IPWatchdog last week, although less frequent, occasional denials still occur.

Certainly the WDTX is no longer the silver bullet to the PTAB. That is, recent congressional inquiry asserting that its trail dates are suspect, has highlighted that the agency should expect to reach a decision before the Court. Yet, the agency should not expect petitioners to make that point in their filings.

Continue Reading PTAB Fintiv Practices Need Reality Check

CLE This Month

For those seeking some quality CLE this month, consider the second annual Patent Litigation Masters™ 2022 program, presented by IPWatchdog® this coming May 23rd-24th. The program is offered live at the Hyatt Regency (Dulles Airport). The two-day agenda offers a number of compelling topics, and as usual with the Watchdog Masters Programs, a stellar lineup of speakers.

The Litigation Masters program will focus on patent litigation in the United States, specifically from the perspective of the most active federal district courts in the country, the International Trade Commission (ITC), Patent Trial & Appeal Board (PTAB) and appeals to the United States Court of Appeals for the Federal Circuit. The program will also take a look at special issues of importance, including damages, patent eligibility, Standard Essential Patents, and injunctions. If it happens as a part of litigating patents in the U.S., we will cover it as a part of this program.

Hope to see you there!

Tillis/Hirono Demand Answers on OpenSky

Barely on the job for a week, Director Vidal is already being politically pressured to address a festering issue of patent policy.   That issue—the use of a recycled IPR petition as a means to collaterally attack large damage verdicts— is a self-inflicted wound for the agency.  The OpenSky business model wouldn’t exist absent the ill conceived expansion of discretionary denial practices under former Director Iancu.

Senator Tillis (a vocal supporter of Director Iancu) sent a letter to the agency this past Wednesday demanding answers….gotta love politics. Continue Reading Senate Grows Impatient with PTAB

New Director Turns Attention to Rule Making

This past Friday, Director Vidal announced that the agency will be keeping the current interim Director review process that was put in place post-Arthrex.  The Director added that the process (or some variant thereof) will be formalized via Notice-and-Comment Rulemaking after collecting stakeholder input.  In the coming weeks, the agency intends to issue a Request for Comment (RFC) on the Director review process. In addition to providing more details on the Director review process (here), Director Vidal “strongly encourage[d] parties to provide a priority-ranked list of issues being raised.”

Issues that may warrant review by the Director include:

    • Issues that involve an intervening change in the law or USPTO procedures or guidance
    • Material errors of fact or law in the Patent Trial and Appeal Board (PTAB) decision
    • Matters that the PTAB misapprehended or overlooked
    • Novel issues of law or policy
    • Issues on which PTAB panel decisions are split
    • Issues of particular importance to the Office or patent community
    • Inconsistencies with Office procedures, guidance, or decisions

The agency is still not accepting Director Review filings for denied institutions, but a recently filed mandamus petition to the CAFC could change that practice 😉

To provide feedback prior to issuance of the RFC, email Director_Review_Suggestions@uspto.gov

Delaware To Become Less Popular for NPEs?

This past Monday, Chief Judge Connolly of D. Del issued a standing order for all pending litigation before him requiring disclosure of certain financial relationships from litigating parties.  The information is due 30 days from filing of an initial pleading, and includes arrangements made between parties and third party funders.

While eminently sensible in terms of identifying true decision makers for settlement purposes, or identifying potential conflicts of interest, the new requirements will surely send NPEs screaming into the night. Continue Reading Delaware Court Looks To Unmask Litigation Funders

New Confirmation to Drive New Policy?

At long last, the Senate has finally confirmed Kathy Vidal as the new PTO Director….just in time to tender her resignation before the next administration!  Ok, maybe not quite that late.  But considering it can take close to two years for any Notice and Comment Rulemaking to get through the system, these appointment delays can seriously hamstring a Director’s ability to drive any significant policy change.

So, the new Director needs to hit the ground running.  And, as usual, the PTAB offers some early hurdles. Continue Reading Finally, a New PTO Director. Now What?

Federal Circuit Affirms Hunting Titan POP Decision

In Hunting Titan, Inc. v. DynaEnergetics GmbH & Co. KG, Inc., IPR2018-00600. The PTAB’s POP panel reviewed the denial of a Motion to Amend based upon a panel’s sua sponte modification of a petitioner’s proposed ground (here).  In reversing that determination, the POP found that such a sua sponte action should be a “rare circumstance.”  For example,  where there is a readily identifiable patentability concern apparent in the record.

At the time, I pointed out that when a petitioner presents a 103 ground that in reality is a 102 ground, I could not imagine how such a circumstance was not readily identifiable, and rare.  While seemingly agreeing with me, the Federal Circuit nonetheless affirmed the POP panel. Continue Reading No PTAB Duty to Separately Examine Amended Claims

How the PTAB Ticks This Thursday!

Do you want to learn more about the inner workings of the Patent Trial and Appeal Board (PTAB)?   Hello!!….what IP nerd doesn’t!?   If so, the next PTAB Boardside Chat webinar will really spin the propeller on your cap.

This Thursday, March 17, from noon to 1 p.m. ET, the agency discusses its Board Operations Division. Find out who they are and what they do to help keep the PTAB running. The webinar will cover the division’s duties, which include paneling cases, managing hearings, and performing paralegal tasks.  The usual question-and-answer session will follow the presentation.

Register (here)

Questions may be sent in advance or during the webinar to PTABBoardsideChat@USPTO.gov.

The event is free and open to all.

Reasonably Could Have Investigated in PGR?

Last month the Federal Circuit recalibrated the scope of IPR estoppel by overruling Shaw Industries. That is, after the SCOTUS decision in SAS Institute, the Court concluded that IPR “raised or reasonably could have raised” estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all claims and grounds not in the IPR but which reasonably could have been included in the petition.

As to “reasonably could have been raised,” this assessment  considers what information was known to the filer, and when, or, what might have been uncovered via a reasonably diligent search.  In the case of a PGR proceeding — allowing a broader range of validity challenge types relative to IPR — this “reasonably could have raised” estoppel footprint poses a significant risk to patent challengers. Continue Reading PGR’s Scary Estoppel Footprint

Next Week’s CLE Agenda

For those seeking CLE this month, a number of great programs to consider in the coming weeks.

First up, the freebie 🙂

Next Tuesday, March 15th @ 1pm(EST) Gardella Grace presents the free one-hour webinar entitled In Possession of an Invention? Litigation Insights for Life Sciences Patent Drafting.  Presenters include patent prosecutor Dr. Patrick Halloran and litigators Cook Alciati and Michael Dorfman of Gardella Grace P.A.  The program will explore recent Federal Circuit decisions addressing the written description requirement in the life sciences field with an eye toward what the patent prosecutor can learn from contested proceedings addressing the written description requirement to stave off later litigation surprises.

Register (here) Login (here) – CLE Requested

Next, the non-freebies 🙁

Next Tuesday through Thursday, March 15th – 17th, the ever popular UTCLE Advanced Patent Law Institute returns as a webcast. The program will began at noon each day and adjourn at 4:25PM(EST).  The program will include a host of patent related topics on Tuesday and Wednesday, Thursday will provide PTAB specific panels on Thursday, finishing up in a CAFC panel that includes circuit court judges Linn, Chen and Stoll.

Register (here)

Also, this month, if you thought Comic-con was nerdy, you aint seen nothing yet!

The 2022 PTAB Bar Association Annual Meeting will be held March 23-25th – in person in Washington DC!  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 much more.  (People dressed as anime characters get in for free….try it).

Register (here)