New Director to Review Hirshfeld Decisions?

Patent Owners that had the option to avail themselves of the new Director Review process under former interim Director Hirshfeld have been crying foul to the Federal Circuit. Their argument being that the Arthrex holding required a Senate confirmed Director Review, and that an interim Director (promoted from within) did not meet that criteria. Argument was heard a month or so back at the Federal Circuit on this issue.

Since that time, Senate confirmed Director Vidal has finally taken the wheel. Realizing this, the gov’t now hopes to pull the plug on these appeals.

Continue Reading More PTAB Arthrex Remands?

314(a) Practices Evolve

Discretionary denials of AIA trial petitions under 314(a) have fallen significantly over the past few months. But, Fintiv practices are not quite dead yet. As noted by IPWatchdog last week, although less frequent, occasional denials still occur.

Certainly the WDTX is no longer the silver bullet to the PTAB. That is, recent congressional inquiry asserting that its trail dates are suspect, has highlighted that the agency should expect to reach a decision before the Court. Yet, the agency should not expect petitioners to make that point in their filings.

Continue Reading PTAB Fintiv Practices Need Reality Check

The Check is in the Mail!

Not much exciting going on at the PTAB until the new Director arrives in a few weeks.  But, there was at least one new POP decision that is worth mentioning.

In Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC the Precedential Opinion Panel (POP) held that payment for an AIA trial petition is effective when received by the Treasury.  I know, I know…try to contain your excitement.
Continue Reading PTAB Finds Wire Payment Effective When Received by Treasury

Stark and Vidal Nominations Head to Finish Line

Tomorrow morning, the Senate Judiciary will pass the nominations of Leonard P. Stark to be United States Circuit Judge for the Federal Circuit, and Katherine Vidal to be Under Secretary of Commerce for Intellectual Property & Director of the United States Patent and Trademark Office, to the

Director Vidal 2022

The Senate Judiciary vetted USPTO Director Nominee Kathy Vidal earlier this month.  Not surprisingly, the hearing was fairly uneventful (even for uber-geeks, like myself).  With a confirmation vote looming, some final written materials have been submitted by Ms. Vidal that are similarly generic in espousing any particular viewpoint that could be labeled as “pro-patent” or “anti-patent.”  That said, reading the tea-leaves, there are some PTAB developments that seem inevitable for 2022 given the current landscape.
Continue Reading Expect Slight PTAB Adjustments From the New Director in 2022

Draft Bill Dead on Arrival

Last week, the “Restoring America’s Leadership in Innovation Act” was again floated by Republican Congressman Thomas Massie (KY).  The same draft Bill was previously released in 2018 and 2020.  Backed only by a handful of relatively powerless House Republicans, the Bill proposes a number of highly controversial measures.  But, if you are going to dream, dream big!
Continue Reading Make Patent Trolls Great Again!

Do Private Arbitration Agreements Undermine Public Policy?

With Congress considering “encouraging” stays of patent litigation pending concurrent PTAB review, licensors may begin to look to contractual  mechanisms to avoid a PTAB filing altogether.  The strategy is not unprecedented, and may provide a way for district courts to enjoin the agency from moving forward with AIA trials.

But, should private agreements thwart mechanisms designed to remove improvidently granted patent monopolies?
Continue Reading Avoiding the PTAB by Private Agreement?

Same Questions, Different Rubric?

Senator Patrick Leahy has now proposed draft legislation to add Obviousness-Type Double Patenting (OTDP) to IPR jurisdiction. The argument for adding this potential ground is that it is an important control to combat improperly extended drug monopolies (the justification underlying much of the legislative proposal).  Whether this provision makes it to law is far from clear given the likely push back from Bio/Pharma.

In the meantime, a Pharma dispute recently argued that OTDP is basically the same PTAB obviousness analysis under a different rubric.  An awkward argument given the coming storm.
Continue Reading PTAB Estoppel & Double Patenting?