Recent Blog Posts

  • PTAB’s Sovereign Power Superior to State/Tribes Government Brief Faults Tribal Immunity Logic On June 4th, the Federal Circuit will hear arguments in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.  As a reminder this case will explore whether principles of sovereign immunity prevent the Patent Trial & Appeal Board (PTAB) from conducting an Inter Partes Review (IPR) of a patent owned by a Native American tribe. In advance of the upcoming hearing, the U.S. Dept. of Justice has filed its amicus brief supporting the agency’s decision to deny immunity.  The government brief explains... More
  • Don’t Miss PLI’s PTAB Trials 2018 This Coming Tuesday Full-Day Webinar Offers Comprehensive PTAB Coverage PLI’s PTAB Trials 2018 will be held this Tuesday, May 15th in San Francisco. If you can’t get there in person, strongly consider the webinar of this full-day event. PLI’s comprehensive program is the longest running and most widely attended PTAB-related CLE in existence. Rather than just exploring PTAB trial practices, this program is known for its 360° degree analysis of the PTAB on the overall patent ecosystem. This year’s program will provide the first, deep-dive analysis... More
  • A Phillips Construction Will Complicate PTAB Petition Drafting Existing BRI Litigation Cover Will Be Blown While the Patent Trial & Appeal Board’s (PTAB) plan to switch from the broadest reasonable interpretation (BRI) to a Phillips claim construction may not be the magic bullet that Patent Owner’s expect, the switch will pose strategic problems for petitioners. Even though the PTAB rarely discerns a difference between a BRI and Phillips constructions, the courts think very differently than the expert agency. For this reason, Petitioners often cited to the different claim construction standards to explain away... More
  • Patent Owners May Rue the Day They Pushed the PTAB to Phillips Change in PTAB Claim Construction May Make Matters Worse for Patent Owners As I pointed out back in March, the Patent Trial & Appeal Board’s (PTAB) switch from the Broadest Reasonable Interpretation (BRI) standard to a Phillips claim construction for AIA Trial Proceedings was telegraphed in advance. The rule package, released today (here), is limited to AIA trial proceedings (IPR, PGR, CBM). Left untouched are patent interference, reexamination, reissue, supplemental examination and derivation proceedings. Upon final rule issuance (late summer/fall) AIA... More
  • What Happens to PTAB Institution Rates Post-SAS? SAS No Help to Patent Owners Since the Supreme Court’s decision in SAS Institute there has been much speculation over its practical impact on stakeholders. That is, does SAS favor petitioners or patent owners? I’ve participated in a number of CLE panels on this topic and have been shocked by those interpreting SAS as somehow beneficial to Patent Owners. Make no mistake about it, SAS hurts Patent Owners…bigly. Those seeing a positive for Patent Owners in SAS will often cite to two potential benefits. First, that SAS will now enable statutory... More
  • IPR Time Bar Exception to End? Can Dismissal Of A Complaint Without Prejudice Unring the 315(b) Bell? Because there hasn’t been enough change to the PTAB over the last week with SAS Institute, get ready for more…but this one will aid Patent Owners. Yesterday the Federal Circuit heard argument (again) in relation to the 2013 IPR filing in Oracle Corp. v. Click-to-Call Techs. LP.  As a reminder the PTAB’s decision in this dispute was designated precedential. (Section (III.A)). The precedential portion explains that the dismissal of a lawsuit “without... More
  • PTAB Related CLE – May Upcoming PTAB Related CLE Even before last week’s Supreme Court opinions in Oil States and SAS, the month of May was already jam packed with PTAB-related CLE. This week, there are a number of shorter, focused webinars, as well as the MIP PTAB forum in New York. Mid-May brings PLI’s flagship PTAB Trials 2018. First, don’t forget the PTAB itself is holding a “Chat with the Chief” webinar today from noon to 1 pm ET to discuss about the Supreme Court’s decisions on Oil States and SAS. Chief Judge David Ruschke will... More
  • PTAB Issues Guidance on SAS Trial Impact Pending Cases to Revisit Pruned Claims/Grounds Today the Patent Trial & Appeal Board (PTAB) issued guidance on the impact of SAS on AIA trial proceedings. The guidance explains that: [F]or pending trials in which a panel has  instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised in the petition), the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition. … ¶ [F]or pending trials . . .... More
  • The AfterMath of SAS & Oil States: Webinar Special PatentsPostGrant.Com Webinar Next Tuesday In addition to the already scheduled webinar next Wednesday on Bio/Pharma Deals & Dispute Resolution in the PTAB Era, a special webinar entitled: Supreme Court Debrief: Oil States & SAS Institute:The Aftermath will be held on Tuesday, May 1, 2018 @ 1-2PM (EST) Register (here) Yesterday, the Supreme Court issued opinions in both the Oil States and SAS Institute appeals. These opinions will have an immediate impact on proceedings at the Patent Trial and Appeal Board (PTAB), pending PTAB appeals... More
  • How the SAS Institute Ruling Will Impact PTAB Practice Patent Owners Will Not Like the Post-SAS PTAB Last month, I predicted a 7-2 affirmance of Oil States (although I had Kennedy in the dissent with Gorsuch rather than Roberts). Still, the outcome of this closely watched case was hardly a surprise, nor was the content of the dissent. (here) While some will read the “narrow” holding characterization of the Oil States majority as a beacon of hope for further constitutional challenges, I don’t see that at all. Rather, I see the... More