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Recent Blog Posts

  • PTAB to Host Judicial Conferences Upcoming PTAB Conferences Across All USPTO Locations Next Thursday, June 28th, the USPTO (Alexandria-HQ) will host its 2018 Patent Trial & Appeal Board (PTAB) Judicial Conference. If you are unable to attend the Alexandria kick-off, the same program will be making its rounds to the regional offices: Detroit (7/9), Denver (7/11), San Jose (7/26), and Dallas (7/31). The Conferences are designed to educate the public about aspects of Board practice as well as providing a forum to enhance the dialogue between the public and the... More
  • CAFC: PTAB Must Not Reformulate Petition Grounds Previously Exercised Discretion Eliminated by SAS While most remember the Cuozzo appeal as challenging the Patent Trial & Appeal Board’s (PTAB) claim construction practices, it also challenged the Board’s discretion to institute claims on grounds not presented in the IPR petition. But, the High Court deemed this issue unreachable given the appeal bar of 35 U.S.C. § 315(b). Still, the Federal Circuit has expressly endorsed the Board’s ability to modify the grounds presented in trial petitions. Today, the Federal Circuit has made clear in Sirona Dental SystemsGMBH v. Institut Straumann AG (precedential)... More
  • Senate Moves to Exclude Orange & Purple Book Patents from PTAB Senator Hatch Proposes PTAB Exception for Orange & Purple Book Patents As explained earlier this week in a study by my partner Filko Prugo, Orange & Purple Book patents fare no worse at the PTAB than in the courts. That said, some believe that the ability to challenge such patents in a faster, cheaper expert forum upsets the balance of power in the existing drug innovator landscape. Today, Senator Orrin Hatch (R-UT), the Chairman of the Senate Republican High-Tech Task Force and... More
  • The Fate of Orange & Purple Book Patents at the PTAB Key Bio/Pharma Assets at the PTAB Through more focused strategy, patent owners have ensured that Patent Trial and Appeal Board (PTAB) proceedings are not overwhelmingly fatal to Orange and Purple Book patents. In fact, patent invalidity rates at the PTAB now rival those in district court litigation. Ropes and Gray’s IP Litigation (Life Sciences) Chair Filko Prugo conducted a study that examines institution rates and final written decision outcomes for each Orange and Purple Book-related PTAB petition filed since the inception of... More
  • CAFC Clarifies SAS Impact on Pending Appeals CAFC Has Jurisdiction Where SAS Relief Waived The impact of the Supreme Court’s decision in SAS Institute has been immediate and far-reaching. As explained last week, the courts have quickly realized the import of this Patent Trial & Appeal Board (PTAB) practice change on motions to stay. As for the PTAB itself, the agency is currently grappling with the unexpected expansion of roughly 50% of its current caseload. With a significant number of PTAB trial appeals on the docket of the Federal... More
  • PTAB Chief to Provide SAS Update Today Two PTAB Boardside Chats This Week Today from noon to 1 PM (EST), Chief Judge David Ruschke will provide additional information about the impact of SAS on AIA trial proceedings. He will also share new information about motion to amend practice, and discuss the recently published Notice of Proposed Rule-making on the claim construction standard to be applied during AIA trials. The webinar is free and open to everyone to attend. Access (here) Later this week, a second Chat will be held on... More
  • PTAB Switches Out Amendment Guidance Aqua Products Results in De-designation of Previous Amendment Precedent In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), regarding motion to amend practice and procedure in AIA trials, the Patent Trial & Appeal Board (PTAB) has de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and has de-designated as informative Idle Free Sys., Inc. v.... More
  • New SAS Reality Impacts Motion to Stay Analysis SAS Weighs in Favor of Stay Pre-Institution At the time SAS Institute first raised its challenge to the partial institution practices of the Patent Trial & Appeal Board (PTAB), I explained that should this argument ultimately prevail that it would be bad news for Patent Owners. Patent Owners facing a motion to stay pending PTAB review frequently leveraged partial institutions to defeat the stay. Such motions were denied because one of the factors considered in the motion analysis is the potential for “simplification... More
  • Chief Judge on SAS & More This Thursday IPO Chat Channel Provides Final Word on SAS This Thursday the IPO Chat Channel will feature the Chief Judge of the Patent Trial & Appeal Board (PTAB) on the program entitled: A New PTAB Landscape: The Impact of SAS, Recent Federal Circuit Decisions, and the Proposed Change to the BRI Standard. The program will explore the path ahead after SAS Institute and other recent developments impacting PTAB practice. (register here)... More
  • How Might the Director Improve the PTAB for Patent Owners? Pro-Patent Owner Options The new Director of the U.S. Patent & Trademark Office (USPTO) has issued a Notice of Proposed Rulemaking (NPRM) in record time. With only a few weeks on the job, the Director issued a NPRM to switch the Broadest Reasonable Interpretation (BRI) currently used in Patent Trial & Appeal Board (PTAB) trial proceedings to a Phillips claim construction. The proposal was quickly lauded by Patent Owners believing that the application of the Phillips standard by the PTAB will lead... More