Recent Blog Posts

  • April Webinar April Webinar to Explore Bio/Pharma Deals & Disputes in the PTAB Era This month’s edition of the free webinar series will be held on Wednesday May 2nd, 2018 @ 2PM. The April webinar is entitled: Bio/Pharma Deals & Dispute Resolution in the PTAB Era. Register (here) The emergence of the Patent Trial & Appeal Board (PTAB) as a forum for patent validity disputes has altered the business landscape of both innovator and generic companies alike. PTAB proceedings are now commonplace for Orange Book... More
  • PTAB Remands Looking More Like Eventual Wins for Patentees PTAB Denies Party Submissions on Remanded IPR Appeal A successful appeal to the Federal Circuit from the Patent Trial & Appeal Board (PTAB) typically ends in vacatur and remand. As explained a few weeks back, surprisingly, the Board is not simply correcting the record on remand to maintain its earlier decision. Rather, in most cases a remand results in an eventual victory for the appealing party. This practice gives hope to Patent Owners who may have been assuming that absent reversal, a remand was... More
  • PTAB Seeks Judicial Law Clerks One-Year Clerkship Opportunities The PTAB has created and is hiring for a new Judicial Law Clerk Program. The PTAB modeled this program off the judicial law clerk program used in the federal courts. Judicial law clerks will gain experience working at the PTAB for a one-year term directly with one or more administrative patent judges (APJs). Judicial law clerks will assist on cases in all jurisdictions of the PTAB, including trials under the America Invents Act and ex parte appeals. Judicial law... More
  • PTAB to Discuss Ex Parte Appeal Practices Thursday April Boardside Chat: Ex Parte Appeals The Patent Trial & Appeal Board (PTAB) will host its next “Boardside Chat” webinar this Thursday, April 5 from noon to 1 p.m. ET. The chat will discuss “Petitionable Matters, Objectionable Matters, and New Grounds of Rejections in Ex Parte Appeals.” PTAB Judges Adriene Lepiane Hanlon, Bruce Wieder, and Anthony Knight will present and address audience questions. Webinar Access Information for Apr. 5, 2018 at noon, E.T.:  Click on the link: Event/Access #:  996 735 788 Event password:  AprilChat2018 Access... More
  • PTAB Likely to Adopt a Philips Construction for AIA Trials in 2018 New Director’s Interest in Predictability To Drive PTAB Change As pointed out yesterday over at IPWatchdog, the USPTO Solicitor has withdrawn as Intervenor in the Federal Circuit appeal between Telebrands Corporation and Tinnus Enterprises (stemming from PGR2015-00018, challenging a patent pertaining to the well-known Bunch-o-Balloons® product on indefiniteness grounds). The USPTO intervened in the earlier appeal to defend the indefiniteness standard applied in the PGR. This is because the applied standard was stricter than that enunciated in Nautilus, Inc. v. Biosig Instruments, Inc.,... More
  • CAFC Shuts Down PTAB Pending St. Regis Mohawk Tribe Appeal Stay To Force PTAB Outside of Statutory Time Limit? Today, the Federal Circuit issued a stay of further Patent Trial & Appeal Board (PTAB) proceedings pending the St. Regis Mohawk Tribe’s sovereign immunity appeal. The appeal challenges the Board’s determination that the Tribe is not immune from its proceedings as a sovereign entity. As a reminder, the tribe is alleged to be the new owner of Allergan patents relating to the ophthalmic Restasis®  Also, today, the Board cancelled the hearing scheduled for... More
  • Prosecution Estoppel on IP Chat Channel & Webinar This Week + IPO’s IP Chat Channel CLE This Week I have written extensively about the threat of PTAB estoppel to established patent prosecution practices. This Thursday, I, along with my co-panelists, will explore PTAB estoppel as well as other aspects of res judicata and issue preclusion in the IPO Chat Channel program (2-3PM EST) entitled: Patent Prosecution Estoppel from PTAB Proceedings Register: (here).   On Wednesday, this month’s edition of the free webinar series will be held @ 2PM (EST). The March Webinar is entitled: Evolution of... More
  • PTAB Adds More Feedback on Previously Presented Art/Arguments (325(d)) Additional Informative Decisions 325(d) Today the Patent Trial & Appeal Board (PTAB) added to its growing stockpile of cases that address the meaning of “same or substantially the same prior art or arguments” under 35 U.S.C. § 325(d). This growing body of decisions is welcome news for Patent Owners as it emphasizes the scrutiny given to AIA trial petitions that attempt to revisit prior art and arguments of a previous proceeding. The PTAB has designated the following decisions informative. Kayak Software Corp. v. International Business Machines... More
  • Long-Stalled Stronger Patents Act Introduced in House Copycat House Bill to Generate Positive Buzz? Today, Representative Steve Stivers (R-OH) and Representative Bill Foster (D-IL) introduced H.R. 5340, the so-called “Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patent Act.” The bill (here) is a carbon copy of the Senate Bill (save some cosmetic changes). On the Senate side, the Bill has existed in some form since 2015 but has languished. This is because its proposals would essentially legislate away the patentability trial mechanisms of America... More
  • PTAB Remands from the CAFC: Mixed Outcomes PTAB Remand Not Always Deja Vu When appealing a decision of an administrative agency such as the Patent Trial & Appeal Board (PTAB), reversal is quite rare. This is because rarely will a pure question of law (with no facts in dispute) control the outcome of such an appeal  Rather, a typical PTAB appeal to the Federal Circuit will dispute whether the agency record fully supports its decision, or is complete with respect to required fact finding. In these cases vacatur and remand are appropriate. Since... More