OED to Explain PTAB Admission Practice Thursday

This Thursday, June 17th, from noon to 1 p.m. ET, the PTAB’s Boardside chat webinar will explore the mechanics of admission to practice before the Patent Trial and Appeal Board (PTAB).

Office of Enrollment and Discipline (OED) Attorney Kimberly Weinreich will discuss admission to practice before the United

Is a Trade Secret Readily Ascertainable if it is in the Prior Art?

Since the passage of the Defend Trade Secret Protections Act (DTSA) in 2016, trade secret litigation has become more attractive. The DTSA provides a federal remedy in place of the scattershot approaches previously available under varying state laws. Often times, a trade secret claim will accompany a patent assertion.

More recently courts are beginning to consider the impact of a given trade secret being in the prior art, akin to patent validity analyses.
Continue Reading Using the PTAB to Undermine an Alleged Trade Secret

Unified Patents Insights Webinar This Thursday

This Thursday April 1st, Unified Patent’s Insight Webinar series (free) will present its April offering at 12PM(EST):

The PTAB and the Western Way: How Judge Albright’s Court and the Board Interact
In the webinar, the panel will  explore the impact of the Western District of Texas on the patent

Targeting a Moving Target

For those seeking some PTAB-related CLE this month, don’t miss today’s one-hour briefing, entitled: PTAB 2021 – Targeting a Moving Target. Practising Law Institute is presenting the program today at 1pm (EST).

Register (here)

The program will explore the recent uptick in reexamination filings, the current trends with

Inconsistency Across Related Cases is Precluded

When challenging related patents at the Patent Trial & Appeal Board (PTAB), it is not uncommon to present similar grounds of unpatentability across related filings— for example, where the claim sets are substantially similar.  In such scenarios, it is expected that the PTAB will arrive at consistent determinations across the filings. Of course, there is no guarantee, that the same judge will decide all of the cases.  In such instances, there is a possibility of inconsistent results, especially where the challenges are advanced at different times.

For example, party A might challenge a parent patent in an IPR, and lose on a question of obvious under 103.  When a continuation patent issues a bit later, Party A may attempt to challenge the continuation on the same grounds (perhaps bolstered by a better presentation or additional evidence).  In such a scenario, is the Board free to change its mind?  Or is the Board collaterally estopped given the earlier determination, and the same party pursuing the same argument?


Continue Reading Collateral Estoppel in AIA Trial Proceedings

PTAB Team Expands to Include PTAB Judge in the Mechanical Arts

Just a quick shout out to welcome Phil Hoffman to the R&G PTAB team. Phil joins us from the PTAB after spending most of the last decade as an Administrative Patent Judge (APJ).  Phil presided over PTAB trials and ex parte appeals in the

First Boardside Chat of the Year

This Thursday the Patent Trial & Appeal Board (PTAB) will offer its first Boardside Chat of 2021, from noon to 1 p.m. (EST).

Several administrative patent judges of the PTAB will cover:

  • Final rules related to institution of trials, including elimination of the presumption at institution that a genuine

Agency Left to Defend Unsettled Legacy

Upon taking the reins at the USPTO, Director Iancu made clear that he believed the Patent Trial & Appeal Board (PTAB) was cancelling too many patent claims in AIA trial proceedings.  Of course the PTAB was simply implementing the statutory framework given to it by Congress – and the Federal Circuit was largely affirming the PTAB’s work. So, the only possible “fix” for the Director was to rebalance the rules/practice to his liking (i.e., in favor of patent owners).

And he changed as much as he could, as fast as he could.
Continue Reading Activist Director Moves On – What’s Next for the PTAB?

Litigators Amending Claims?

Patent prosecution bars are prophylactic provisions typically included in district court protective orders when there is a risk that a recipient of confidential technical information may use (inadvertently or otherwise) that information while prosecuting patent applications in related technology.  Prosecution bars eliminate this risk by preventing individuals who have access to technical information from directly or indirectly drafting, amending, advising, or otherwise affecting the scope of patent claims in a technical field related to the patents at issue.

Many prosecution bars are now written to cover PTAB proceedings, such as IPRs (since amendment is possible). However, whether district court litigators will be permitted to participate in PTAB proceedings may depend on the particular district where the subject patent is being litigated.
Continue Reading Prosecution Bars & The PTAB – An Evolving District Court View

Director Memo Decides Against Standard of In Re Packard

Back in 2018 I noted the current PTO administration had backed away from a dispute on the appropriate 112 standard to apply in AIA trials (after intervention by the previous PTO administration). That is, the initial intervention sought to support the application of the standard enunciated by In re Packard to AIA trial proceedings.  After Director Iancu came on board, that Intervenor Brief was withdrawn.

Today, the PTO formally announced (via memorandum) that the Nautilus standard applies to AIA trials – settling an open question….at least for the time being.


Continue Reading PTAB Applies Nautilus 112 Standard to AIA Trials…For Now