Well, that Escalated Quickly…

On the heels of the supplemental briefing discussed yesterday, the Federal Circuit has already issued its decision in  Arthrex Inc. v. Smith & Nephew, Inc.  The Court has vacated and remanded the decision, ordering  a new hearing before a panel of different APJs, prospectively remedying the issue by severing the problematic aspect of 35 U.S.C. § 3(c).

So, what does this mean for pending appeals?
Continue Reading

An Avalanche of FWD Do-Overs Imminent?

Back in June I explained the latest constitutional challenge to AIA Trial Proceedings under the Appointments Clause of the U.S. Constitution.  In a nutshell, the argument is that PTAB Administrative Patent Judges (APJ) are “superior officers” delivering the final word of the government in PTAB trial proceedings.  And that, as such, APJ actions are unconstitutional since they are not political appointees confirmed by the U.S. Senate — as the Appointments Clause requires.

That argument found its way to the Federal Circuit earlier this month in Arthrex Inc. v. Smith & Nephew, Inc.  At oral argument, the Court probed the Director’s ability to remove APJs, and seemed concerned that this deficiency was enough to violate the Appointments Clause.  An Order issued last week for additional briefing appears to reinforce the expectation that the Court will find the APJs functioning in violation of the Appointments Clause.


Continue Reading

October Boardside Chat Looks Back at FY2019

Today, from noon to 1 p.m. (EST), the Board will conduct its October Boardside Chat.  The October discussion will cover 2019 changes to ex parte appeal and AIA trial procedures.

The FY2019 changes include the Motion to Amend pilot program, latest updates to the AIA Trial Practice Guide,

Indemnification “Significant and Meaningful Relationship”

Extending a trend started last spring, the PTAB is looking more closely at AIA trial petitions coming from separate parties.  For parties seeking to pursue an AIA trial proceeding, this trend should give pause to those considering participation in Joint Defense Groups, or linked to another petitioner by business arrangement or indemnification obligation.

Last week, in PayPal Inc. v. Ioengine LLC, the Board explained that a customer/supplier relationship, together with indemnification obligation is enough to be considered a “same petitioner” in a General Plastic analysis.
Continue Reading

Exceptional Cases & The PTAB

As discussed last month, as PTAB proceedings conclude at the Federal Circuit and return to the district courts, courts are finding themselves faced with new questions on estoppel. Another question that has been recently posed for successful PTAB challenges is whether, and to what extent, a prevailing party in an “exceptional” case (35 U.S.C. § 285) can obtain fees for work done at the PTAB?

Once again, the answer may depend on the particular district court.
Continue Reading

Precedential & Informative Decision Update Today

The Patent Trial and Appeal Board (PTAB) will host a Boardside Chat webinar today, from noon to 1pm (EST). Vice Chief Judge Scott Weidenfeller, Judge Kevin Cherry, and Judge Amanda Weiker will discuss PTAB decisions designated over the summer as precedential and informative.

The PTAB held a similar webinar

RPI/Privy Disputes Become More Complex + PLI PTAB Trials 2019

As we move into the fall season, a host of bar association programs are on the horizon from IPO, AIPLA and others.  But first, a few options for PTAB focused CLE in September. The PatensPostGrant.com webinar series returns from summer hiatus, and the longest running and most widely attended PTAB CLE program, PLI’s full-day PTAB trials program returns to NYC.
Continue Reading

Takings Challenge to IPR Fails

Since the Supreme Court’s decision in Cuozzo Speed, there has been speculation that there may be an opportunity to attack AIA trials on different constitutional grounds. Most recently, it was argued that cancellation of an improvidently granted patent constituted a 5th Amendment “taking.”

In Celgene Corporation v. Peter, perhaps not surprisingly, the Federal Circuit held that “IPRs do not differ significantly enough from preexisting PTO mechanisms for reevaluating the validity of issued patents to constitute a Fifth Amendment taking.”

While IPRs do not differ significantly from reexamination in scope, CBM proceedings do. 
Continue Reading