Recent Blog Posts

  • 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 As a practical matter, this outdated process excludes all but the most straight forward questions of law from receiving enough “yes” votes to be designated precedential.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
  • Oil States/SAS: Insights From the Oral Arguments Special Webinar Tuesday 11/28 Today the Supreme Court will hear oral arguments in both the Oil States and SAS Institute appeals. Both cases have the potential to have a significant impact on proceedings at the Patent Trial and Appeal Board (PTAB) and, potentially, the entire U.S. patent system.  (Follow me on Twitter @PatentPostGrant for thoughts immediately following the arguments.) Tomorrow, November 28th, will host a free webinar to debrief the oral arguments, and offer insights on the possible practice changes stemming from the forthcoming decisions. (Speakers: Scott... More
  • PTAB: Practice & Procedure Unchanged after Aqua Products No Duty to Discuss Closest Prior Art…But you Probably Should Anyway In implementing the Federal Circuit’s In Re Aqua Products’ holding, the Patent Trial & Appeal Board (PTAB) explains that “practice and procedure before the Board will not change.” And that, “[t]he Board will continue its current briefing practice as to the types, timing, and page limits of briefs.” As pointed out previously, removing the burden from the Patent Owner Motion to Amend will aid the PTAB in granting far more motions, but ultimately, amendments are... More
  • PTAB Standardizes CAFC Remand Practices Standard Operating Procedures (SOP) 9 Released As discussed last week, a remand to the Patent Trial & Appeal Board (PTAB) may be a short-lived victory for Patent Owners. The PTAB has now officially revised the “Standard Operating Procedure 9 (SOP9)” directed to default procedures for cases remanded from the Federal Circuit. Some highlights: PTAB has set a goal of issuing remand decisions within 6 months of the Federal Circuit’s mandate. Panels will now meet with the Chief, Deputy Chief, or their delegates (i.e., one of... More
  • PTAB Trial Fees Set to Increase in January Long Delayed Fee Increase Hits January 16th Section 10 of the Leahy‐Smith America Invents Act (AIA) authorizes the United States Patent and Trademark Office (USPTO) to, in part, “set or adjust by rule any fee established, authorized, or charged” under Title 35 of the United States Code. At the close of 2016, a Notice of Proposed Rule Making (NPRM) issued requesting comments from the public on proposed fee increases for post-grant patent proceedings, including AIA trials. A Final Rule Notice issued today... More