Recent Blog Posts

  • The Power of the PTAB Next Friday October PTAB CLE A reminder that an exciting PTAB related CLE program is a week away. Don’t miss the Chicago-Kent College of Law’s Power of the PTAB: The New Authority in Patent Law on Friday October 20th. (agenda below) Part I: Navigating the PTAB 8:35–9:35 am Reasonable Error Correction or Death Squads — Is the PTAB’s Invalidation Rate Too High or Just Right? Moderator: Paul Henkelmann (Fitch Even) Speakers: Alison Baldwin (McDonnell Boehnen Hulbert & Berghoff LLP), David Killough (Microsoft); Jay Knobloch (Trading Technologies); Daniel Ravicher (Miami); David Schwartz... More
  • Aqua Products Hoists PTAB Critics by Their Own Petard Aqua Products: A Gift to the PTAB Yesterday I explained why In re Aqua Products would not result in PTAB Motions to Amend being any more attractive or ultimately successful. This is because Motions to Amend are rarely advisable in litigation scenarios given intervening rights. And even where viable, such infringement-inspired amendments are almost always too incremental in nature to distinguish over the art. That said, Aqua Products is an absolute game changer for the agency itself. With the burden of patentability now... More
  • In Re Aqua Products: Much Ado About Nothing Federal Circuit Flips Burden in PTAB Motion to Amend For PTAB practitioners, the en banc decision in In re Aqua Products is a complete non-event. While the decision has been embraced as a net positive for Patentees, practically speaking, it will not move the needle on amending at the PTAB. Aqua Products held that it is improper for the PTAB to place the burden of persuasion on the Patentee relative to the patentability of new/amended claims. Going forward, this burden of persuasion... More
  • Patent Prosecutor’s Toolbox: The Better Half of BRI Broadest Reasonable Does not Mean Broadest Possible! The USPTO applies a broadest reasonable claim interpretation (BRI) to patents and patent applications. The abbreviation “BRI” is often used to reference the full claim interpretation standard, which is the broadest reasonable interpretation in light of the specification, from the perspective of one skilled in the relevant art. (MPEP 2111) Unfortunately, a complete BRI analysis is often mistaken by overemphasis of the “BRI” mantra. That is to say, the proper test is not simply a “broadest reasonable... More
  • PatentsPostGrant.Com September Webinar September Webinar to Focus on Expected Changes to PTAB Practice This month’s edition of the free webinar series will be held on Thursday September 28th @12:30 (EST). The September webinar is entitled: The Evolution of PTAB Trial Practice (speakers: Scott McKeown & Gaby Higgins). As the title suggests, the webinar will cover the expected impact and possible changes resulting from: In re Aqua Products (Federal Circuit) Wi-Fi One, LLC v. Broadcom Corporation (Federal Circuit) SAS Institute v. Matal (Supreme Court) Oil States Energy Services, LLC v. Greene’s Energy Group... More
  • Sovereign Immunity at the PTAB a Temporary Phenomena? Oil States/CAFC to Unravel “Litigation” Premise Sovereign immunity from proceedings of the Patent Trial & Appeal Board (PTAB) has become inextricably linked with the Oil States debate now before the Supreme Court. That is, the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity at the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit. In Oil States, the “trial argument” is made to distinguish IPR... More
  • PTAB 5 Year Anniversary: Chat With Chief Judge Boardside Chat Tomorrow Tomorrow, Tuesday, September 12, 2017 from 12-1 p.m. ET the Patent Trial & Appeal Board (PTAB) will conduct a special “Boardside Chat” in which representatives from AIPLA, IPO, ABA, PTAB Bar Association, and Federal Circuit Bar Association will interview the Chief Judge on the 5th year anniversary of the PTAB. The program is free to attend.  Discussion topics include PTAB procedures, the latest statistics, and new developments.  The program also will include an opportunity to “Ask the Chief Judge” your questions. Webinar access information is below. Event: PTAB... More
  • New PTAB Precedent Endorses In re Packard….But For How Long? PTAB Precedent (Not Surprisingly) Embraces CAFC Precedent As I pointed out last week, it is a heavy lift for the Patent Trial & Appeal Board (PTAB) to designate a precedential decision.  For this reason, nothing but the most straightforward of issues can be decided and designated “precedential.” The PTAB issued a prime example of a seemingly straightforward precedential decision a few days ago in Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017), Section I.B. (here). This PTAB precedent makes clear that the... More
  • Common Evidentiary Issues in PTAB Trials Boardside Chat Today As discussed yesterday, evidentiary issues are handled quite differently at the PTAB as compared to the district court. Right on cue, the PTAB will host a Boardside Chat today to address common evidentiary issues in AIA trial proceedings from 12-1 p.m. ET. The webinar panel will include Administrative Patent Judges Medley, Chang, and Cox.  The discussion will cover common evidence issues that occur in AIA trial proceedings before the Board. The program is free to attend. Webinar access information is below. Event: PTAB Boardside Chat Webinar Registration available online Date and time: Thursday,... More
  • PTAB Offers of Proof? Preserving The PTAB Trial Record An objection operates to preserve errors in admitting evidence. At the PTAB, the manner and timing of making evidentiary objections is governed by agency rule rather than the Federal Rules of Evidence (FRE). 37 C.F.R. § 42.64.  An Offer of Proof, on the other hand, preserves errors in excluding evidence. But, to date, Offers of Proof have not been a recognized mechanism of PTAB trials — not formally anyway.  This is despite the fact that there is no agency rule... More