Timing of Estoppel Unimportant

Last week in Novartis Pharmaceutical Corp. v. Par Pharmaceutical Inc., Nos. 14-1289-RGA, 14-1494-RGA, 15-0078-RGA (D. Del. Apr. 11, 2019), (here) the court addressed a motion to estop defendants from asserting invalidity arguments based on prior art references already presented at trial. The motion argued that, in related IPR proceedings brought while litigation was pending, the same defendants challenged and failed to prove the unpatentability of overlapping claims. The Board’s Final Written Decision (FWD) issued during the appeal. (later remanded back to D.Del)

Novartis argued that, irrespective of the timing of the FWD, that the invalidity defenses and counterclaims presented at trial by defendants should be estopped.
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Director Encouraged to Do What He is Already Doing?

At several bar events over the past few weeks, the Director has made clear that the agency is “looking into” ways to address certain serial petitioning practices beyond that of the “follow-on” scenario. For example, where multiple petitions are filed at the same time for the sole purpose of multiplying the number of grounds for an AIA trial proceeding.

This past Tuesday, the Senate Judiciary Committee sent a letter to Director Iancu seemingly asking him to do what he is already doing.  And for him to respond to proposed directives (transparently presented in the form of questions) on accomplishing such.
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Unchallenged Claim Falls on Summary Judgement

Back in 2016, I flagged a few district court decisions that leveraged Patent Trial & Appeal Board (PTAB) fact-finding on summary determination. These decisions weighed the fact finding of the expert agency as “compelling evidence” and noted the Board”s “expertise in evaluating prior art and assessing patent validity.”  While crediting the fact finding on common technical issues, these decisions stopped short of finding outright issue preclusion based upon the earlier PTAB proceeding.

However in some instances, PTAB determinations might be leveraged to attack claims that slipped through the PTAB net.
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Boardside Chat This Wednesday

This Wednesday, April 10, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar about the new pilot program for motions to amend in AIA trials. Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will present.

The new Pilot program

Justice Dept. Defends Challenge to APJ Appointments

The latest constitutional challenge to the Patent Trial & Appeal Board (PTAB) involves the Appointments Clause.

The Appointments Clause of the U.S. Constitution has been interpreted to require that only “Principal Officers” of the United States — appointed by the President and confirmed by the Senate — can exercise “significant authority” pursuant to the laws of the United States. What is significant authority, you ask?  In a nutshell, the final word of the U.S. government.

So the debate in the now pending petition for certiorari in Polaris Innovations Ltd. v. Kingston Tech. (and in other petitions for cert raising the same issue) has become whether the APJs of the PTAB are superior officers rendering the final word of the government in PTAB trial proceedings, or whether they are instead functioning as “inferior officers” subject to the control of the Director (a political appointee, confirmed by the Senate).

The Government weighed in earlier this week on these petitions for certiorari.
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New Chief & Deputy Chief to Speak Thursday

The Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar this Thursday, April 4th from noon to 1pm(EST). The webinar will introduce new Chief Judge Scott Boalick and Deputy Chief Judge Jackie Bonilla. The judges will discuss recent precedential and informative decisions issued by

Issue Joinder Debate Comes Full Circle

As previously discussed, the Patent Trial & Appeal Board’s (PTAB) new Precedential Opinion Panel (POP) has considered its first case in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)

The POP reversed the earlier (divided) panel decision in Proppant Express (which conflicted with the earlier consensus of Target Corp. v. Destination Maternity), holding that 35 U.S.C. § 315(c) permits issue joinder. More specifically, the POP held that 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding (here).

That is, we are right back where we started in Target.
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Judge Scott Boalick Formally Appointed Chief

The United States Patent and Trademark Office (USPTO) announced today the appointment of Scott Boalick as Chief Judge for the Patent Trial and Appeal Board (PTAB). Boalick has served as the acting Chief Judge for the PTAB since September 2018. Boalick begins his permanent role today.

Boalick was appointed

Statutory Right to Appeal for Joined Parties

In Mylan Pharmaceuticals Inc. v. Research Corp. Technologies, Inc., (here) the Federal Circuit held that parties joined to an IPR petition have a statutory right of appeal under 35 U.S.C. § 319 as “parties”, even if the original petitioner lacks Article III standing for appeal.
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