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Recent Blog Posts

  • PTAB Clarifies 315(B) Positions With Informative Opinions Board Continues to Provide Helpful Feedback on Best Practices The Patent Trial & Appeal Board (PTAB) has designated the following decisions, which involve 35 U.S.C. § 315(b), as informative. Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (PTAB Sept. 18, 2017) (Paper 13). In this decision, the Board denied institution after determining that the Petition was not timely filed under 35 U.S.C. § 315(b), because payment was not received by the Office until after the date the Petition was filed. The Board also denied Petitioner’s... More
  • CAFC Softens PTAB Appeal Bar WiFi One Touchstone: Closely Related to Patentability Determination? As I predicted would happen last Spring, the Court held today in Wi-Fi One v. Broadcom (here) that the appeal bar is limited to Director determinations closely related to the preliminary patentability determination, or the exercise of discretion not to institute. As such, questions that may be fully and finally decided before a trial on the merits, such as 315(b), are no longer barred from appeal. As a reminder, appeals from Inter Partes Review (IPR) decisions of the Patent... More
  • 2017 CAFC Guidance for Patent Prosecutors Prosecutor’s Tool Box 2017 Patent prosecutors navigate complex USPTO rules and seemingly esoteric examinational requirements to procure patent rights. In doing so, it is easy to lose sight of the fact that the Manual of Patent Examining Procedure (MPEP) does not have the full force and effect of law. Nevertheless, patent examiners (rarely trained lawyers) adhere to their interpretation of the Manual requirements. To budge examiners off of entrenched, legal positions, savvy prosecutors will keep a trained eye on the Federal... More
  • Boardside Chat Tomorrow with PTAB Chief Chief to Discuss Current PTAB Developments The USPTO’s Patent Trial & Appeal Board (PTAB) is holding a “Chat with the Chief” webinar tomorrow, Tuesday, Dec. 19 from noon to 1 p.m. ET.  The free webinar will explore recent developments in PTAB practice.  Chief Judge David Ruschke will discuss recent agency guidance such as Aqua Product guidance for motions to amend, new procedures for handling remands, and the expanded panel process. The webinar is free and open to everyone to attend. Access information is available here.... More
  • Ethics Quandaries in PTAB Proceedings AIPLA Webinar Today 12:30-2PM (EST) For those needing those pesky CLE ethics credits before year end, consider today’s AIPLA webinar Ethics Issues in PTAB Proceedings. (register here)  – 1.5 Ethics credits are offered. Course Description: AIA trial proceedings present heightened risks for practitioners unaccustomed to participating in a live, patent prosecution history. Unlike traditional court-based trial proceedings, the PTAB layers on additional ethical requirements and duties of candor for practitioners. Counsel for patent owners that successfully navigate an AIA trial proceeding are particularly vulnerable in this regard.... More
  • Judicial Independence & The PTAB The Tension Between Judicial Independence & Agency Consistency As I have pointed out previously, the Board struggles to issue precedential decisions. This is because the Board (now approaching 300 judges) must reach a “sufficient majority” consensus on an issue before designating it precedential. As a practical matter, this outdated process excludes all but the most straight forward questions of law from receiving enough “yes” votes to be designated precedential. To be sure, such disparity in opinion across a large number of judges is not surprising on close questions of law. Reasonable... More
  • Boardside Chat Today on Printed Publication Proofs Best Practices for Presenting Prior Art Join the PTAB for the final Boardside Chat webinar of 2017 today, Dec. 7 from noon-1 p.m. ET. The chat will discuss “Best Practices for Presenting Prior Art References and Proving a Document is a Printed Publication.” PTAB Judges Lora Green and Brian McNamara will present and address audience questions. This topic is relevant to both ex parte appeal and AIA trial proceedings. The webinar is free and open to everyone. (view here)... More
  • Upcoming Webinars: Functional Claiming & PTAB Ethics Functional Claiming & PTAB Ethics in December For those seeking some CLE before the holiday break, there are some interesting webinars on the immediate horizon. Today, on the IPO Chat Channel, Functional Claiming After Mastermine Software v. Microsoft.  Functional claiming and definiteness standards will be analyzed in view of recent Federal Circuit decisions. (register here) Later this month, AIPLA offers a PTAB related webinar: Ethic Issues in PTAB Proceedings (register here)... More
  • PTAB Collects Amici on Tribal Immunity Dispute Tribal Immunity in Focus at PTAB Previously I explained that the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity from the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit. Recent amicus filings supporting the petitioner echo that sentiment. In response to the PTAB Order earlier this month authorizing amicus briefing, input from a number of organizations has been received.  The complete set is linked below. Amicus Curiae... More
  • PTAB Challenges Fall Flat High Court Poised to Endorse PTAB & Partial Institution Practices While I will discuss my more detailed impressions during tomorrow’s webinar, a few quick thoughts. Oil States -Article III review of the PTAB, and more particularly de novo review of legal issues, was key to a majority of Justices. -Trying to distinguish reexamination and IPR never made sense in view of Cuozzo, and it backfired on petitioner. -Justice Gorsuch appeared to be the only one accepting the real property analogy to patents. -Patent validity did not... More