Federal Circuit Denies Tribal Sovereign Immunity from PTAB Proceedings

Last Friday, the Federal Circuit affirmed the Patent Trial & Appeal Board’s (PTAB) denial of tribal sovereign immunity as a patent owner defense to an AIA trial challenge. The decision tracks my November prediction that the Court would follow its reasoning in Ultratec, Inc. v. Captioncall, LLC, 2017, (Fed. Cir. Aug. 28, 2017), which explained that PTAB proceedings were not “trials” in an Article III sense. You can find Friday’s decision in St. Regis Mohawk Tribe v Mylan Pharm., Inc. (here)

The Board noted that the question of state sovereign immunity was left for another day, but was it really? Continue Reading Tribal Sovereign Immunity Denied, Will State Immunity Hold at the PTAB?

PTAB Conferences Provide Unique Exchange with Stakeholders

While the summer months are relatively quiet when it comes to marquee CLE events and bar organization gatherings, the Patent Trial & Appeal Board (PTAB) is providing a rare opportunity for stakeholders in late July.

On the heels of its successful programs in Alexandria, Denver and Dallas, the PTAB brings its day-long Judicial Conference to San Jose, CA on Thursday, July 26th and Dallas, TX on Tuesday, July 31st

The Conference is designed to be interactive to enable information sharing (in small workshop-like settings) between judges and practitioners. Attendees will interface with sitting PTAB judges to explore common trial issues and thought processes. At least 25 judges will be in attendance at each conference, including Chief Judge David Ruschke.

In the AM section of the program, judges will discuss best practices for written and oral advocacy, and then attendees can hone their skills through workshop exercises conducted at tables and facilitated by PTAB judges.

In the PM section of the program, attendees can share their opinions on hot topics such as patent eligible subject matter and motions to amend during small group discussions led by PTAB judges to facilitate candid feedback and information exchange.

Finally, local IP leaders will interview Chief Judge David Ruschke to gain a better understanding of his views on recent PTAB developments, such as the proposed change to claim construction, practices, trial practices impacted by the recent decision in SAS Institute, etc.

Having attended the Alexandria stop, I found the program innovative. It offers a rare opportunity to interact with PTAB judges, and to discuss real-world PTAB dilemmas. I strongly recommend it.

The conference is free and open to the public, and advance registration is not needed.  Please see the PTAB Judicial Conference website for more details.

 

Political Theater & Patent Reform

The Stronger Patent Act has failed to gain traction for several years now. The Bill is deemed to one-sided, proposing legislative changes that would effectively kill AIA trial proceedings. Strangely, a new bill was introduced last week that goes even further.

The so-called Restoring America’s Leadership in Innovation Act (here) proposes to disband the Patent Trial & Appeal Board (PTAB) and with it, AIA trial proceedings. The new bill also seeks to convert the U.S. system back to a first-to-invent system. The Bill is sponsored by Rep. Thomas Massie (R-Ky.) and co-sponsored by Reps. Marcy Kaptur (D-Ohio) and Dana Rohrabacher (R-Calif.). Some may recall Reps. Rohrabacher and Kaptur as being opponents of the post-grant mechanisms of the AIA.

While perhaps heartening to critics of the PTAB, the latest bill is little more than political theater. With mid-term elections on the way, and a Supreme Court nomination battle, attempts at patent reform will have to wait until 2019 – assuming a balanced bill ever emerges.

Senator Hatch Proposes PTAB Exception for Orange & Purple Book Patents

As explained earlier this week in a study by my partner Filko Prugo, Orange & Purple Book patents fare no worse at the PTAB than in the courts. That said, some believe that the ability to challenge such patents in a faster, cheaper expert forum upsets the balance of power in the existing drug innovator landscape.

Today, Senator Orrin Hatch (R-UT), the Chairman of the Senate Republican High-Tech Task Force and co-author of the Hatch-Waxman Act, filed an amendment in the Senate Judiciary Committee to in his words “restore the careful balance the Hatch-Waxman Act struck to incentivize generic drug development.” Senator Hatch’s amendment, the Hatch-Waxman Integrity Act of 2018, is argued to  prevent alternative procedures for challenging drug patents from tilting the playing field contrary to Hatch-Waxman’s design. It is also argued to ensure that brand-name and generic manufacturers alike have the proper incentives to develop life-saving medications. Continue Reading Senate Moves to Exclude Orange & Purple Book Patents from PTAB

Two PTAB Boardside Chats This Week

Today from noon to 1 PM (EST), Chief Judge David Ruschke will provide additional information about the impact of SAS on AIA trial proceedings. He will also share new information about motion to amend practice, and discuss the recently published Notice of Proposed Rule-making on the claim construction standard to be applied during AIA trials.

The webinar is free and open to everyone to attend. Access (here)

Later this week, a second Chat will be held on Thursday from noon to 1 PM (EST). The Thursday Chat will discuss “Motions to Exclude and Motions to Strike in AIA Trial Proceedings.” PTAB Judges Justin Arbes and Kevin Cherry will present and address audience questions.  Access (here)

SAS Weighs in Favor of Stay Pre-Institution

At the time SAS Institute first raised its challenge to the partial institution practices of the Patent Trial & Appeal Board (PTAB), I explained that should this argument ultimately prevail that it would be bad news for Patent Owners. Patent Owners facing a motion to stay pending PTAB review frequently leveraged partial institutions to defeat the stay. Such motions were denied because one of the factors considered in the motion analysis is the potential for “simplification of issues for trial.”  And where a trial would eventually be conducted regardless of PTAB outcome — the case when there was a partial institution — this factor weighed strongly in favor of Patent Owners continuing the district court litigation .

Post-SAS, this argument is now gone. The impact of SAS on common stay scenarios is already being felt by Patent Owners. Continue Reading New SAS Reality Impacts Motion to Stay Analysis

IPO Chat Channel Provides Final Word on SAS

This Thursday the IPO Chat Channel will feature the Chief Judge of the Patent Trial & Appeal Board (PTAB) on the program entitled: A New PTAB Landscape: The Impact of SAS, Recent Federal Circuit Decisions, and the Proposed Change to the BRI Standard. The program will explore the path ahead after SAS Institute and other recent developments impacting PTAB practice. (register here)

Pro-Patent Owner Options

The new Director of the U.S. Patent & Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) in record time. With only a few weeks on the job, the Director issued a NPRM to switch the Broadest Reasonable Interpretation (BRI) currently used in Patent Trial & Appeal Board (PTAB) trial proceedings to a Phillips claim construction. The proposal was quickly lauded by Patent Owners believing that the application of the Phillips standard by the PTAB will lead to narrower claim constructions, and thus, more patents being upheld by the agency. But, as I pointed out previously, in practice, BRI is rarely different from a Phillips construction. In fact, utilizing the same standard at the PTAB as in the courts might only make matters worse for Patent Owners from a monetization perspective.

Impact of the proposed claim construction change aside, the speed at which the Director has acted speaks to his keen interest in improving the PTAB playing field for Patent Owners. With the Director expected to issue further proposals to aid Patent Owners, below are some likely candidates. Continue Reading How Might the Director Improve the PTAB for Patent Owners?

Full-Day Webinar Offers Comprehensive PTAB Coverage

PLI’s PTAB Trials 2018 will be held this Tuesday, May 15th in San Francisco. If you can’t get there in person, strongly consider the webinar of this full-day event. PLI’s comprehensive program is the longest running and most widely attended PTAB-related CLE in existence. Rather than just exploring PTAB trial practices, this program is known for its 360° degree analysis of the PTAB on the overall patent ecosystem. This year’s program will provide the first, deep-dive analysis of the recent changes introduced by the Supreme Court, as well as proposed and expected USPTO rule packages.

This year’s program also adds unique segments dedicated to licensing and monetization strategies in Silicon Valley, as well as PTAB-centric patent prosecution practices. I am pleased to continue to chair this program alongside Robert Greene Sterne of the Sterne Kessler firm. (The New York stop of this program will be September 21st and will include a similar monetization module directed to Bio/Pharma)

Hope to see you there.

 

Upcoming PTAB Related CLE

Even before last week’s Supreme Court opinions in Oil States and SAS, the month of May was already jam packed with PTAB-related CLE.

This week, there are a number of shorter, focused webinars, as well as the MIP PTAB forum in New York. Mid-May brings PLI’s flagship PTAB Trials 2018.

First, don’t forget the PTAB itself is holding a “Chat with the Chief” webinar today from noon to 1 pm ET to discuss about the Supreme Court’s decisions on Oil States and SAS. Chief Judge David Ruschke will discuss the decisions, their impacts on AIA trial proceedings, and answer questions. The webinar is free and open to everyone to attend (here)

On Tuesday May 1st, @ 1-2PM EST is a special edition of the PatentsPostGrant.com free webinar series entitled: Supreme Court Debrief: Oil States & SAS Institute: The Aftermath. This webinar will be focused on changing PTAB and litigation strategies in light of Oil States and SAS, including those changes discussed by the chief in today’s Chat with the Chief webinar. On this program I will be joined by Ropes & Gray’s Appellate and Supreme Court practice chair Douglas Hallward-Driemeier, as well as patent litigator Matthew Rizzolo. Register (here)

Wednesday May 2nd @ 1-2PM EST brings the regularly scheduled PatentsPostGrant.com free webinar entitled: Bio/Pharma Deals & Dispute Resolution in the PTAB Era. For this webinar I am joined by Ropes & Gray’s Life Sciences IP Litigation Chair Filko Prugo, and IP Transactions Partner Melissa Rones. Register (here)

On Thursday May 3rd in NYC, is Managing Intellectual Property’s PTAB Forum. This full-day program will move to Palo Alto on May 8th.

Last but not least is PLI’s PTAB Trials 2018 on May 15th in San Francisco (also available by webcast). The PLI program is the longest running and most widely attended PTAB-related CLE in existence. This year brings special segments dedicated to licensing and monetization strategies in Silicon Valley, as well as PTAB-centric prosecution practices. I am pleased to continue to chair this program alongside Robert Greene Sterne of the Sterne Kessler firm. (The New York stop of this program will be September 21st)

Hope you are able to attend one of these many upcoming programs.