PTAB Appeals Focused on Merits

The SCOTUS re-calibrated the PTAB’s appeal bar in Thryv, Inc v. Click-To-Call Techs., LP., explaining that potential violations of 35 U.S.C. § 315(b) were too closely related to the institution determination of the agency to escape the appeal bar.  Since that time, the Federal Circuit has considered at least two additional issues that it may no longer have the ability to consider on appeal: RPI/privity disputes, and determinations that a patent qualifies as a Covered Business Method (CBM) patent.

As to RPI/privity, those disputes are now barred from appeal.
Continue Reading Thryv Continues to Simplify CAFC Appeal Docket

Legal World Adjusts to Pandemic

As different parts of the country adjust to Coronavirus outbreaks of varying degrees of intensity, government agencies and courts are issuing revised operating procedures.

The Federal Circuit announced today that some of the cases of the April argument calendar are being removed and will be submitted on the briefs.  In cases remaining on the argument calendar, if counsel for either party is located outside the National Capital area, the argument will be conducted by telephonic conference at the date and time previously scheduled.  In cases scheduled for argument where counsel for both parties are local, as of now, the court plans to proceed with in-person argument as previously scheduled.  Parties in all cases will be notified individually as to how we plan to proceed in their case.

The International Trade Commission (ITC), is postponing hearings scheduled in the next 60 days. The Commission will
Continue Reading Coronavirus Status Of Courts & Executive Agencies

Are Biosimilar Development Efforts Enough?

In Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Co. (here), the Federal Circuit was poised to explore the level of biosimilar legwork that could satisfy Article III standing for appeal from an adverse Patent Trial & Appeal Board (PTAB) decision. But, business developments of Momenta since the 2017 oral argument have now spoiled all of the fun.

The question as to how much investment/business exploration is enough in the biosimilar context for Article III standing remains an open question.


Continue Reading BPCIA & FDA Steps as Article III Standing from the PTAB?

Change in Claim Construction Standard Provides Greater Appellate Opportunity

Some months back the Patent Trial & Appeal Board (PTAB) proposed dropping the broadest reasonable interpretation (BRI) in favor of the so-called “Phillips construction” of the courts. That final rule package, while expected to have been issued by now, is hung up in the Office of Management & Budget (OMB) for regulatory review. (While described in the proposed rule as a change that was not deemed “significant,” should OMB disagree, the final rules will be delayed until the necessary regulatory hoops can be navigated).  Nevertheless, whether in 2018 or 2019, it is clear that the agency intends to move PTAB trial proceedings away from BRI to the Phillips standard.

While this change may not move the needle very much for PTAB trials, it should provide enhanced appellate opportunity.
Continue Reading What a Phillips Construction Could Mean for PTAB Appeals

Next Week: PTAB BoardSide Chat & PatentsPostgrant.Com Webinar

Next week, brings back-to-back programs on PTAB appeals, both with a unique focus.

First, up, 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