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2017: A Year of CAFC Feedback & Agency Refocus

With so much attention being paid to Oil States, it was easy to lose sight of many of the more noteworthy Patent Trial & Appeal Board (PTAB) related decisions of 2017. Last year brought significant feedback from both the Federal Circuit and Board on a number important aspects of administrative trial practice. From important issues of appellate standing, the use of ancillary petition art, to a crack down on follow-on petitions and recycled prior art, both the Board and Federal Circuit delivered a host of critical clarifications.

While a bit later than usual…below are my Top 5 PTAB Trial-related Developments of 2017.  
Continue Reading Top 5 PTAB Related Decisions of 2017

Federal Circuit to Consider PTAB Sovereign Immunity Defense

State-affiliated entities enjoy immunity from suit in federal courts under the 11th amendment. To date, a handful of such entities have successfully leveraged the same immunity theory to avoid review of their patents before the Patent Trial & Appeal Board (PTAB). While still other Patent Owners have aligned themselves with Native American Tribes in an effort to benefit from their sovereign status in the hopes of avoiding PTAB review.

More recently, in Ericsson v. Regents of the University of Minnesota.the PTAB has determined that sovereign immunity is waived where the sovereign entity files an infringement suit. (here)

Appeal was taken from this decision this week.
Continue Reading PTAB Sovereign Immunity Dispute Heads to CAFC

February Webinar to Explore Litigation Strategies & PTAB Antidotes

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday, February 22nd @ 2PM (EST). The February Webinar is entitled: Roadblock PTAB: Litigation Strategies & IPR Antidotes.

Register (here)

Program Description: In the 5+ years since their inception,…

Expanded Does Not Equal “Stacking”

As I explained previously, an expanded panel at the PTAB is an exceedingly rare occurrence.  But, as the Federal Circuit made clear in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.(here), on at least one occasion, PTAB panel expansion was utilized to drive uniformity on an inconsistently decided question of law (issue joinder). That is, an expanded panel was utilized to change the underlying decision in an issue joinder dispute.  PTAB critics were quick to latch onto this “panel stacking” as evidence of an anti-patent bias. This criticism was even echoed by the Supreme Court during the Oil States argument.

Since that time, the Board has continued to utilize expanded panels on issues of importance without changing the underlying result.  However, the recent panel stacking notoriety continues to haunt all expanded panel decisions.

Dispelling this perception, the Chief Judge clarified the purpose and framework of expanded panels during yesterday’s quarterly meeting of the Patent Public Advisory Committee (PPAC).
Continue Reading PTAB Explains Expanded Panel Rationales

Patentee Estoppel Can Shut Down Related Prosecution

Patent prosecutors might consider PTAB estoppel a pure post-grant concern. That is, a litigation issue restricted to district courts after a failed PTAB challenge, or an issue raised in the context of a second-bite at the PTAB apple. But, PTAB estoppel can effect both failed petitioners and unsuccessful patent owners. Patent owner estoppel, often overlooked, is only now beginning to impact patent prosecution.

Prosecutors beware.
Continue Reading The PTAB Estoppel Keeping Patent Prosecutors Awake at Night

January Webinar to Focus on PTAB Appeals to the CAFC

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit. With the Federal Circuit’s affirmance rate for PTAB appeals hovering at around…

AIPLA Webinar Today 12:30-2PM (EST)

For those needing those pesky CLE ethics credits before year end, consider today’s AIPLA webinar Ethics Issues in PTAB Proceedings. (register here)  – 1.5 Ethics credits are offered.

Course Description: AIA trial proceedings present heightened risks for practitioners unaccustomed to participating in a live, patent prosecution history. Unlike…

High Court Poised to Endorse PTAB & Partial Institution Practices

While I will discuss my more detailed impressions during tomorrow’s webinar, a few quick thoughts.

Oil States

-Article III review of the PTAB, and more particularly de novo review of legal issues, was key to a majority of Justices.

-Trying to distinguish reexamination and…

Special PatentsPostGrant.com Webinar Tuesday 11/28

Today the Supreme Court will hear oral arguments in both the Oil States and SAS Institute appeals. Both cases have the potential to have a significant impact on proceedings at the Patent Trial and Appeal Board (PTAB) and, potentially, the entire U.S. patent system.  (Follow me on Twitter @PatentPostGrant for…