New Presentation of Same IPR Art Thwarted by Estoppel

Post SAS, there are fewer exceptions to IPR estoppel. Indeed, the absence of partial institutions has led to many courts finding the “reasonably could have raised” aspect of IPR estoppel to be broader than just the art of the ultimate Patent Trial & Appeal Board (PTAB) trial. As such, unsuccessful petitioners are now exploring alternative theories.

In The California Institute of Technology v. Broadcom Limited, et al., (here) the Central District of California found that IPR estoppel applies where the same IPR reference is later raised under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a), rather than as a “patent or printed publication” as in the IPR. Continue Reading IPR Art Simultaneously Qualifying as Known or Used Subject to Estoppel

PTAB 2018: A Year of Agency Recalibration

The Patent Trial & Appeal Board (PTAB) stole much of the 2018 patent law spotlight. From landmark Supreme Court decisions such as Oil States and SAS Institute, to significant en banc Federal Circuit decisions in WiFi-One, PTAB practice evolved more in 2018 than in any prior year. That said, the most impactful 2018 changes for practitioners were driven by the agency.

Under the pro-patent leadership of Director Iancu, the agency is expected to drive still further change in 2019. Continue Reading Top 5 PTAB Practice Developments of 2018

Even Preliminary Proceeding Arguments Notice the Public

It is well-established that statements made by a Patent Owner during an inter partes review (IPR) can constitute prosecution disclaimer— even in papers filed by a Patent Owner before the trial. Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017)

As a reminder, prosecution disclaimer prevents a patentee that clearly and unmistakably disclaimed a certain meaning for its patent claims during prosecution from recapturing this same meaning during claim construction in a subsequent litigation. As was the case in Aylus, Patent Owners are learning that the timing of such a disclaimer, or lack of express adoption by the Patent Trial & Appeal Board (PTAB), is of no moment. Continue Reading Beware Prosecution History in PTAB Trials

Wednesday Chat to Address Recent Changes

The Patent Trial & Appeal Board will host a special “Boardside Chat” webinar on Wednesday, Nov. 7 from noon to 1 p.m. ET. The webinar is free and open to everyone.

The program will address a variety of recent changes to procedures, including the process of paneling cases (Standard Operating Procedure 2) and the process for issuing precedential decisions (Standard Operating Procedure 1). The program will also address the claim construction standard to be applied in AIA trials, which recently changed from the broadest reasonable interpretation to the standard used in federal courts. Lastly, it will explain the proposed changes to motion to amend practice that the agency recently published in the Federal Register.

Several PTAB judges will present and be available for questions, including: Acting Chief Judge Scott Boalick, Acting Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim Fink, and Vice Chief Judge Scott Weidenfeller. (access here)

PTAB Webinars this Wednesday

The October edition of the PatentsPostGrant.com webinar series will be held this Wednesday October 24th @ 1-2PM (EST).  The October program is entitled Adapting to the New Patent Trial & Appeal Board (PTAB).  This month’s program will include special guest Jonathan Bowser, Senior Patent Counsel for Unified Patents and will explore a host of changes, trends and expected shifts in PTAB and parallel litigation strategies for both petitioners and patent owners.

Free Registration: (here)

Later that same afternoon, @ 3PM (EST), PLI will host a one hour debrief entitled: The Reinvention of the Patent Trial & Appeal Board. This program will view the current political landscape of the agency and how that may impact further changes and existing practices before the Board, as well as legislative initiatives.

Register: (here)

I hope you are able to join me at one of these upcoming programs.

Invalidity Contentions Serve as Estoppel Benchmark

A Patent Owner may only avail itself of an IPR estoppel defense in court upon demonstrating that a competent prior art search would have uncovered the art that is asserted post-IPR (i.e., raised or reasonably could have raised during the IPR. 35 U.S.C. § 315(e)(2))  This demonstration of proof can be complicated by a number of factual questions such as the degree of skill of the searcher, the complexity of the art, and what was known by the petitioner and when.

A recent decision in the Southern District of Texas looks to simplify such disputes by utilizing invalidity contentions as estoppel markers.  Continue Reading Invalidity Contentions as IPR Estoppel Markers

Claimed Ranges Overlapping with Prior Art Shift Burden of Production to Patent Owner

Since the Federal Circuit’s decision in Magnum Oil, the Patent Trial & Appeal Board (PTAB) has been mindful that the ultimate burden of persuasion must remain with the patent challenger. While this general rule guides most proceedings at the PTAB, as the Federal Circuit reminded the Board today, there are exceptions for the burden of production.

In E.I. Dupont De Nemours v. Synvina C.V. the Court considered whether a claimed range shown to be overlapping with that of the prior art creates a rebuttable presumption of obviousness. The Court reiterated that it did, and that once an overlap is shown by a Petitioner, it falls to the Patent Owner to come forward with appropriate rebuttal evidence. Continue Reading CAFC Explains PTAB Burden Shift for Claimed Ranges

Federal Circuit Finds PTAB Discovery Determinations One-Sided

On the heels of Applications in Internet Time, LLC v. RPX Corporation, the Federal Circuit once again finds itself considering a PTAB RPI/Privity dispute. In RPX, the Court held that “determining whether a non-party is a “real party in interest” demands a flexible approach that takes into account both equitable and practical considerations, with an eye toward determining whether the non-party is a clear beneficiary that has a preexisting, established relationship with the petitioner.” That is, the inquiry is fact-dependent, and not limited to one party controlling the other as some PTAB decisions seemed to suggest.

Last week, the Court examined the allocation of burdens in such disputes in Worlds Inc. v. Bungie, Inc., finding that the PTAB may be improperly shifting the burden to Patent Owners in RPI/Privity discovery disputes. Continue Reading Burden Clarification To Expand PTAB Discovery for RPI/Privity Disputes?

The Impact of SAS Institute on Statutory Estoppel

IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added). Prior to the Supreme Court’s decision in SAS Institute, the courts did not apply statutory estoppel to grounds upon which the Patent Trial & Appeal Board (PTAB) refused to institute trial. The reasoning was that statutory estoppel under 35 U.S.C. § 315(e)(2) only applied to grounds adjudicated in a Final Written Decision (FWD).  As such, grounds shaken out (i.e., partial institutions) prior to trial could not be covered by such estoppel.

Post-SAS, of course, there are no longer partial institutions and this previous distinction simply goes away.  But what happens to those partially instituted cases that remain pending, can a petitioner side-step the revived SAS grounds in the hope of holding onto this estoppel exception?  Continue Reading Failure to Pursue SAS Grounds Leads to Statutory Estoppel

Upcoming PTAB-Related CLE Options

With the summer winding down, it is time to start looking forward to fall. September offers a number of great CLE options.

First up, on September 12th (@1-230PM EST) is the Strafford webinar entitled: Evolving PTAB Trial Practice: Navigating Complex Procedural Rules. This program offers 1.5hrs of CLE and will cover a broad range of PTAB trial practices, including recent practice changes and those on the immediate horizon.

For those seeking a deeper dive, PLI’s flagship PTAB Trials 2018 will be held on Friday September 21st in New York City. If you can’t get to NYC in person, strongly consider the webinar of this full-day event. (register here) 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 and includes such noted speakers this year as former CAFC Chief Judge Paul Michel. This year’s program will provide the first, deep-dive analysis of the recent Trial Practice Guide changes as well as other proposed and expected USPTO rule packages.

This year’s program also adds a unique segment dedicated to licensing and monetization strategies, Northeast Corridor: Bio/Pharma & the PTAB, 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. 7 CLE credits are offered in most jurisdictions.

Hope to see you at one of these upcoming events.