Recent Blog Posts

  • PTAB Webinar Tomorrow Webinar to Cover Flurry of CAFC Developments & SAS Cert.  Tomorrow, May 25, 2017, I will present a webinar for Strafford Legal on: Evolving PTAB Trial Practice: Navigating Complex Procedural Rules (live webinar: 1:00PM-2:30PM EDT) The program will cover a number of important topics, not the least of which is the expected impact of pending en banc decisions of the Federal Circuit as well as the potential impact of the SAS debate now at the Supreme Court.    On June 15th, I, along with my partner Alex Hadjis will... More
  • PTAB Trial Estoppel Demystified in EDTX? Recent Decision out of EDTX First to Get PTAB Estoppel Provision Correct  IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during... More
  • Eliminating Partial PTAB Institutions Will Undermine Trial Practice "All or Nothing" PTAB Institution Practice Coming Soon?   Today, the Supreme Court granted certiorari in SAS Institute Inc., v. ComplemenSoft LLC.   As previously explained, SAS argues that partial PTAB trial institutions are inconsistent with the controlling statutes of the America Invents Act (AIA).  That is, if the PTAB finds that at least one claim is demonstrated as likely unpatentable, the PTAB should institute trial for all petitioned claims.     The dispute stems from an IPR filing of SAS in which it challenged all sixteen... More
  • Constitutional Challenges to PTAB Another Dead End Public vs. Private Rights: Another PTAB Distraction  We all remember the "Great BRI Debate" that was Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016). PTAB critics argued that the Board's "broadest" claim construction rubric was unfairly stretching claims to embrace prior art — resulting in inevitable invalidity determinations. And that since the PTAB was now in the business of litigation, they must follow litigation claim construction practices deemed more favorable to patent holders (especially since the PTAB amendment... More
  • May/June PTAB CLE PTAB Related CLE   May 10th-11th: American Conference Institute presents its Third Annual Post-Grant PTO Proceedings in New York City (here). This two-day event will cover a variety of AIA Trial Proceeding topics. The second day will include a three-hour workshop entitled Parallel Proceedings: The Good, The Bad, and The Ugly.   May 16, 2017: MIP PTAB Forum 2017 will be held in New York City. (here)  This is a full-day forum on PTAB trial practices.  May 25, 2017: Strafford Legal presents: Evolving PTAB Trial Practice:... More