Roughly 10% of AIA Proceedings Involve Amendments

Earlier this week the Patent Trial & Appeal Board (PTAB) released the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions, through the end of March 2020.  Not surprisingly, this installment doesn’t look much different than previous ones.  Amendment remains unpopular at the Board for strategic reasons, and those Patent Owners that do attempt amendment are rarely successful.

While the 6th installment preview early results on the Amendment Pilot, it does not present success rates (which to date, are no better then the old program – also, not a surprise). While there was an initial flurry of Patent Owners opting for the Pilot program, that initial amendment popularity has waned.
Continue Reading PTAB Amendment Study Shows More of the Same

Federal Government Seeks Cert on Appointments Clause & Forfeiture Issues

On June 25th, the federal government filed a petition (here) for certiorari asking the Supreme Court to review the CAFC’s decisions in both Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019) and Polaris Innovations Ltd. v. Kingston Tech. Co., Inc., No. 2018-1831 (Fed. Cir. Jan. 31, 2020).  This petition comes as no surprise after the CAFC’s fractured denial of an en banc Arthrex rehearing.

The Court has had occasion to consider Appointments Clause issues several times in recent years, most notably in Lucia v. SEC (2018), and again touching upon the issue last week in Seila Law LLC v. CFPB. 

Is there a SCOTUS appetite for the gov’t’s issues?
Continue Reading PTAB Appointments Clause Debate: SCOTUS Preview

Board Acknowledges Slipping WDTX Trial Date

Some weeks back I highlighted the institution decision in Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393), which held that despite most General Plastic Factors favoring institution, the majority felt as though a looming WDTX trial date trumped all other GP factors and denied institution.  After petitioner’s unsuccessful request for a Precedential Opinion Panel (POP) hearing, the Board ordered additional briefing.

Today, the Board reversed course instituting the Sand Revolution IPR.  In the process, the Board provided some insight into slipping WDTX trial dates and steps petitioners can take to help avoid discretionary denials of parallel AIA trial petitions.
Continue Reading PTAB Reverses Discretionary Denial Based on WDTX Trial

LEAP Program Launches 5/15

Today, the USPTO officially launched the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP). LEAP is designed to foster development of the next generation of patent practitioners by creating opportunities to gain the proper skills and experience in oral arguments before the Board. The USPTO explains that it understands “stand up” speaking opportunities before tribunals are limited and that gaining courtroom experience is advantageous for practitioners in their career development.

A LEAP practitioner is defined as someone who is new to the practice of law or new to practice before the PTAB.  To qualify as a LEAP practitioner, a patent agent or attorney must have three or fewer substantive oral arguments in any federal tribunal, including PTAB, and seven or fewer years of experience as a licensed attorney or agent. 
Continue Reading PTAB Offers Expanded Oral Argument Times to New Attorneys

Webinar to Discuss Remote Hearings

This coming Friday, May 1st, the Patent Trial and Appeal Board (PTAB) will conduct a ‘Boardside Chat” webinar from noon to 1 p.m. ET.

The webinar will address logistics for virtual proceedings, public remote viewing of hearings, timing considerations for filings, and the CARES Act relief. Chief Judge Scott Boalick,

Public Policy Role of PTAB Clashes with Assignor Estoppel Equities

The doctrine of assignor estoppel prevents prior owners/inventors of a patent from later challenging the patent’s validity.  Assignor estoppel’s premise is that the assignor “should not be permitted to sell something and later assert that what was sold is worthless, all to the detriment of the assignee.” Diamond Scientific Co. v. Ambico, Inc., 848 F.2d 1220, 1224 (Fed. Cir. 1988).

While exceptions to assignor estoppel have existed since its inception, the Federal Circuit has found that the AIA can be leveraged to circumvent the doctrine—that is, while a prior owner of a patent may not challenge the patent’s validity at district court, it may challenge the validity at the PTAB.
Continue Reading Assignor Estoppel & the PTAB