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.
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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.
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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. 
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Legislation & Continued Judicial Feedback

There have been a number of developments in the courts, at the USPTO, and on the legislative side over the past few months. These developments, some of which have been discussed here at length — such as the 101 legislative effort — will continue to drive new patent strategies and

Redundant Grounds Not An Efficient Administration of Justice

Last month, the Patent Trial & Appeal Board (PTAB) issued an Order explaining that maintaining multiple, concurrent proceedings per patent presents a significant burden for the Board.  More specifically, where the same claims are challenged across multiple, redundant petitions (i.e., pile-on), the Board pointed out that instituting trial across all redundant filings may undermine the Office’s ability to complete proceedings in a timely manner and places an unfair burden on the Patent Owner. 35 U.S.C. § 314(a).

That petition filer, which has filed numerous redundant petitions across a large patent portfolio, is now seeing the first of its redundant petitions being denied.


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Standing Dispute Highlights 315(e)(2) Estoppel Concern

Article III standing has been a problem for certain petitioners seeking review of adverse Patent Trial & Appeal Board (PTAB) AIA trial rulings. This is because, while the AIA statutes provide that anyone other than a patent owner may challenge a patent at the PTAB, Article III standing is necessary for petitioners to appeal adverse PTAB decisions to the Federal Circuit. Phigenix, Inc. v. ImmunoGen, Inc.  Since Phigenix, there have been a number of Federal Circuit decisions exploring the degree of harm necessary to convey Article III standing in this context.

Earlier this week, the Federal Circuit analyzed “competitor harm” as a basis for Article III standing along with the potential of adverse estoppel impact of 35 U.S.C. §315(e)(2) on the petitioner.. While the competitor harm analysis may be interesting from an academic standpoint, the more meaningful discussion for practitioners is the Court’s commentary on the 315(e) estoppel impact for such petitioners. 
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Simultaneous/Redundant Petitions Attacking Same Claims Questioned

The Patent Trial & Appeal Board’s (PTAB) new focus on institution equities of serial petition challenges was the most significant development of 2018. Since that time the Board has expanded its equitable focus beyond follow-on petitions and similarly situated defendants to consider parallel litigation timing.

This week, the Board tackled a new consideration. That is, whether it makes sense from a fairness perspective to give an IPR petitioner 5 bites at the same apple. I have been expecting this one.
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