Patentee Estoppel Can Shut Down Related Prosecution

Patent prosecutors might consider PTAB estoppel a pure post-grant concern. That is, a litigation issue restricted to district courts after a failed PTAB challenge, or an issue raised in the context of a second-bite at the PTAB apple. But, PTAB estoppel can effect both failed petitioners and unsuccessful patent owners. Patent owner estoppel, often overlooked, is only now beginning to impact patent prosecution.

Prosecutors beware. Continue Reading The PTAB Estoppel Keeping Patent Prosecutors Awake at Night

WiFi One Opens the Door to Reconsideration of Well-Established PTAB Precedent

The Federal Circuit’s softening of the appeal bar (35 U.S.C. § 314(d)) in WiFi One will now allow the Court to consider matters unrelated to the merits of an institution decision, and in some cases, well-established precedent of the Patent Trial & Appeal Board (PTAB).

For example, in Oracle Corp. v. Click-to-Call Techs. LP Case IPR2013-00312, Paper 26 (Oct. 30, 2013), Section (III.A) was designated precedential.  This section explains that the dismissal of a lawsuit “without prejudice” nullifies the service of the complaint relative to 35 U.S.C. § 315(b).  The Federal Circuit announced last Friday that it can now consider this precedent, post WiFi One.

Continue Reading CAFC to Consider Popular IPR Time Bar Exception

January Webinar to Focus on PTAB Appeals to the CAFC

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit. With the Federal Circuit’s affirmance rate for PTAB appeals hovering at around 70%, and with such appeals approaching 50% of the Federal Circuit’s docket, successful appellate advocates must not only stand out from the crowd, but build winning trial records from Day 1. This task is easier said than done with the accelerated pace of PTAB trials, limited discovery, and recent recalibration of the appeal bar in Wi-Fi One v. Broadcom.

The January PatentsPostgrant.com webinar is presented by R&G PTAB Practice Chair Scott McKeown & Appellate/Supreme Court Practice Chair Douglas Hallward-Driemeier who will offer their insights and experiences in  building winning PTAB appeals to the Federal Circuit. Register (here)

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 webinar please sign up via the link above. You will receive a registration confirmation email immediately. Two hours 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).

I love to create bokeh from colorful things. This was taken from some colorful glasses.
Shabu Anower, Unsplash

Board Continues to Provide Helpful Feedback on Best Practices

The Patent Trial & Appeal Board (PTAB) has designated the following decisions, which involve 35 U.S.C. § 315(b), as informative.

Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (PTAB Sept. 18, 2017) (Paper 13). In this decision, the Board denied institution after determining that the Petition was not timely filed under 35 U.S.C. § 315(b), because payment was not received by the Office until after the date the Petition was filed. The Board also denied Petitioner’s motion to assign an earlier filing date to the Petition after determining that Petitioner failed to show good cause for waiving the fee requirement.

Amneal Pharmaceuticals, LLC v. Endo Pharmaceuticals, Inc., Case IPR2014-00360 (PTAB June 27, 2014) (Paper 15). In this decision, the Board determined that the Petitioner was timely filed under 35 U.S.C. § 315(b) because filing a motion to amend the complaint in district court, with an amended complaint attached, does not constitute service.

As a reminder, an “informative” opinion, while not binding PTAB authority, illustrates norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest. It is worth noting that 315(b) issues are now subject to appeal (after WiFi One).

WiFi One Touchstone: Closely Related to Patentability Determination?

As I predicted would happen last Spring, the Court held today in Wi-Fi One v. Broadcom (here) that the appeal bar is limited to Director determinations closely related to the preliminary patentability determination, or the exercise of discretion not to institute. As such, questions that may be fully and finally decided before a trial on the merits, such as 315(b), are no longer barred from appeal. Continue Reading CAFC Softens PTAB Appeal Bar

Prosecutor’s Tool Box 2017

Patent prosecutors navigate complex USPTO rules and seemingly esoteric examinational requirements to procure patent rights. In doing so, it is easy to lose sight of the fact that the Manual of Patent Examining Procedure (MPEP) does not have the full force and effect of law. Nevertheless, patent examiners (rarely trained lawyers) adhere to their interpretation of the Manual requirements. To budge examiners off of entrenched, legal positions, savvy prosecutors will keep a trained eye on the Federal Circuit for help.

2017 provided several decisions of immediate value to patent prosecutors. Continue Reading 2017 CAFC Guidance for Patent Prosecutors

Chief to Discuss Current PTAB Developments

The USPTO’s Patent Trial & Appeal Board (PTAB) is holding a “Chat with the Chief” webinar tomorrow, Tuesday, Dec. 19 from noon to 1 p.m. ET.  The free webinar will explore recent developments in PTAB practice.  Chief Judge David Ruschke will discuss recent agency guidance such as Aqua Product guidance for motions to amend, new procedures for handling remands, and the expanded panel process.

The webinar is free and open to everyone to attend. Access information is available here.

AIPLA Webinar Today 12:30-2PM (EST)

For those needing those pesky CLE ethics credits before year end, consider today’s AIPLA webinar Ethics Issues in PTAB Proceedings. (register here)  – 1.5 Ethics credits are offered.

Course Description: AIA trial proceedings present heightened risks for practitioners unaccustomed to participating in a live, patent prosecution history. Unlike traditional court-based trial proceedings, the PTAB layers on additional ethical requirements and duties of candor for practitioners. Counsel for patent owners that successfully navigate an AIA trial proceeding are particularly vulnerable in this regard. Winning at the PTAB may result in such practitioners being thrust into an inequitable conduct phase of a later district court suit. This panel will provide an overview of the ethical obligations of parties and counsel, including the duties of candor and good faith, as well as the PTAB’s still-evolving disclosure obligations. The panel will also examine recent developments, the role of the Office of Enrollment & Discipline (OED) and recent cases assessing allegations of misconduct and considering the imposition of sanctions.

 

The Tension Between Judicial Independence & Agency Consistency

As I have pointed out previously, the Board struggles to issue precedential decisions. This is because the Board (now approaching 300 judges) must reach a “sufficient majority” consensus on an issue before designating it precedential. As a practical matter, this outdated process excludes all but the most straight forward questions of law from receiving enough “yes” votes to be designated precedential.

To be sure, such disparity in opinion across a large number of judges is not surprising on close questions of law. Reasonable minds differ. Which is why it is somewhat surprising that 98% of PTAB merit-based decisions are unanimous. Continue Reading Judicial Independence & The PTAB

I love to create bokeh from colorful things. This was taken from some colorful glasses.
Shabu Anower, Unsplash

Best Practices for Presenting Prior Art

Join the PTAB for the final Boardside Chat webinar of 2017 today, Dec. 7 from noon-1 p.m. ET. The chat will discuss “Best Practices for Presenting Prior Art References and Proving a Document is a Printed Publication.”

PTAB Judges Lora Green and Brian McNamara will present and address audience questions. This topic is relevant to both ex parte appeal and AIA trial proceedings. The webinar is free and open to everyone. (view here)