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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

SCOTUS Clarifies PTAB Institution Issues Not Subject to Appeal

Back In December I pointed out that the SCOTUS would likely tighten the PTAB appeal bar in Dex Media Inc. v. Click-To-Call Technologies, LP, explaining that, based on the oral argument, that several justices of the Court seemed to take the view that technical violations, such as 315(b) were too closely related to the institution determination of the agency.  For example, Justices Kagan and Ginsburg explained it would be “a little bit silly to go back to square one” and that there was “something unseemly about nullifying the determination on the merits.” (transcript here)

Today’s majority decision, authored by Justice Ginsburg, presented no surprises.
Continue Reading PTAB Appeal Scope Recalibrated by SCOTUS

Additional Briefing Invited on Binary Application of NHK

Last week I pointed out that the litigation timing factor introduced by NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc., has effectively swallowed the entirety of the General Plastic factors in NHK scenarios. That is, in some recent Board decisions, institution has been declined in AIA Trial Proceedings on the sole basis that a district court litigation would reach trial first.  Given the AIA has its own timing mechanism, 35 U.S.C. § 315(b), and plaintiffs seeking to avoid the PTAB need only go to the WDTX (where NPEs tend to go anyway) to leverage this development, this is a troublesome development for the system.

In that same post, I pointed out that a request was made to the Precedential Opinion Panel (POP) to review the Board’s application of NHK (Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393). While that request was denied, the very next day, the panel in Sand Revolution ordered supplemental briefing on this important topic.
Continue Reading PTAB to Take a More Nuanced Approach to NHK Determinations?