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.

Trial Practice Guide Changes and Recalibrated PTAB Practice

This Tuesday @1pm(EST), the Practising Law Institute (PLI) will host the webcast entitled: Patent Owners and the PTAB – Is There a Light at the End of the Tunnel? The program will explore a host of recent developments, not the least of which is the recent changes to the PTAB Trial Practice Guide.

Other topics will include:

  • Impact of the switch to the Phillips claim construction practices
  • What has SAS Institute done for petitioners?
  • What has changed in RPI/Privy disputes?
  • Will amending get easier?
  • What other changes are expected in the months ahead?
  • Is legislation likely?

I hope you can join, me, and my co-panelist Rob Greene Sterne of Sterne, Kessler, Goldstein & Fox, P.L.L.C., for this timely discussion.

Patent Owner’s Given New Rights in Trial Practice Guide Update

The Federal Register will issue a notice updating the Patent Trial & Appeal Board (PTAB) Trial Practice Guide on Monday, August 13, 2018.  You can find a copy of this notice in the advanced reading room (here).  The update provides a number of changes to update the guide as to outdated material, but more importantly, provides significant, new benefits for Patent Owners. Continue Reading Patent Owners to Get Last Word at PTAB – Starting Now

CAFC Emphasizes Flexibility of its Printed Publication Jurisprudence

Last week, I pointed out that the Federal Circuit faulted the Patent Trial & Appeal Board (PTAB) for its narrow public accessibility analysis in Medtronic, Inc. v. Barry. Given the de novo review of printed publication status at the Federal Circuit, it is an issue that is frequently challenged on appeal.

Last Friday the Court took another opportunity to apply its multi-factor analysis to a printed publication dispute in GoPro Inc., v. Cointour IP Holdings, LLC.  In GoPro, the Court once again emphasized that focusing on a single factor (expertise of the audience) to the exclusion of others is reversible error. In reversing the Board’s decision in GoPro, the Court emphasized (here) that the reasonable diligence standard is applied to those skilled in the art. And that, proof of actual dissemination is not required, only that a person of skill could have located the publication with reasonable diligence.

In still another recent case, the Court explained that a commonly emphasized factor at the PTAB, indexing/searchability, is not a requirement to prove a printed publication publicly accessible. Continue Reading Publication Need not be Indexed/Searchable to be Prior Art

Public Accessibility: A Fact Intensive Inquiry

Yesterday I highlighted a significant decision for Patent Trial & Appeal Board (PTAB) practitioners pertaining to Real-Party-In-Interest (RPI) and privity determinations, Applications in Internet Time, LLC v. RPX Corporation. In Applications, the Federal Circuit faulted the Board for its narrow analysis of the facts, explaining that a more fact-intensive analysis was in order that takes into consideration the complete record. The Court’s rebuke of the PTAB’s RPI/Privy analyses reminded me of another significant Federal Circuit decision of the last few weeks that will recalibrate established PTAB practices.

In Medtronic, Inc. v. Barry the Court also faulted the Board for its narrow analysis of public accessibility. And, like its decision in Applications, directed the Board to perform a more fact intensive analysis of the entire record. Continue Reading Printed Publications & The PTAB

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.