CAFC Says “No”…Ninth Circuit Says “Yes”

Under 35 U.S.C. § 285, a prevailing party in a patent infringement dispute may be awarded reasonable attorney fees in “exceptional cases.” I’ve previously discussed the contours of what constitutes an “exceptional” case based upon earlier cases. In 2018, the Central District of California awarded attorney’s fees stemming from a parallel PTAB proceeding, and in 2019 a Michigan court held that conduct at the PTAB may even be permissible as being the sole basis for fees in parallel district court proceedings. Most recently, however, based upon the guidance of the Federal Circuit, 285 has not been extended to attorney fees incurred during a PTAB proceeding.
Continue Reading Circuits Split on PTAB Fees Being Recoverable Under 285

Study Shows Bio/Pharma Patents Fare Better at PTAB

A few years back, the Patent Trial & Appeal Board (PTAB) released a study showing the outcome of proceedings directed to so-called “Orange Book” patents. That study demonstrated that Orange book/Biologic patents were more likely to survive PTAB proceedings relative to other patents. Last week, the 2018 study was updated.

The update shows the performance of Orange Book/Biologic patents at the PTAB since 2012.
Continue Reading Bio/Pharma Patents Fare Best at PTAB

AIPLA Webinar Next Tuesday

For those seeking some PTAB-related CLE, consider next Tuesday’s AIPLA webinar @12:30 (EST) entitled:  Discretionary Denials Revisited: The New Politics of FintivRegister (here)

The program will explore the increasing politicization of the USPTO Director position, and what may be on the horizon relative to the uncodified discretionary

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