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Recent Blog Posts

  • Top 5 PTAB Related Decisions of 2017 2017: A Year of CAFC Feedback & Agency Refocus With so much attention being paid to Oil States, it was easy to lose sight of many of the more noteworthy Patent Trial & Appeal Board (PTAB) related decisions of 2017. Last year brought significant feedback from both the Federal Circuit and Board on a number important aspects of administrative trial practice. From important issues of appellate standing, the use of ancillary petition art, to a crack down on follow-on petitions and... More
  • WiFi One Ripple Effect & Concurrent Litigation Strategies PTAB Trial Practice Changes & Evolution of Parallel Litigation Two separate webinars this week for those looking to keep abreast of PTAB evolution and related litigation practices. First, up, this month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday, February 22nd @ 2PM (EST). Roadblock PTAB: Litigation Strategies & IPR Antidotes. Register (here) Then, on Friday February 23rd @ 1PM (EST), join me and Rob Greene-Sterne of Sterne Kessler for PLI’s one hour briefing: PTAB Trial Practice After Wi-Fi One:... More
  • PTAB Sovereign Immunity Dispute Heads to CAFC Federal Circuit to Consider PTAB Sovereign Immunity Defense State-affiliated entities enjoy immunity from suit in federal courts under the 11th amendment. To date, a handful of such entities have successfully leveraged the same immunity theory to avoid review of their patents before the Patent Trial & Appeal Board (PTAB). While still other Patent Owners have aligned themselves with Native American Tribes in an effort to benefit from their sovereign status in the hopes of avoiding PTAB review. More recently, in Ericsson v. Regents... More
  • CAFC Teaches Away on Teaching Away Divergent Technical Teachings of a Primary Reference Matter in an Obviousness Analysis A popular counter-argument to an obviousness attack is that the primary reference of the combination “teaches away” from the proposed combination. That is, if reference (A) is proposed to be modified by the teachings of reference (B) in some manner, and reference (A) criticizes, discredits or discourages that manner of combination, then reference (A) is said to “teach away” from the combination — thus, precluding an obviousness determination on that... More
  • PatentsPostGrant.com Webinar February February Webinar to Explore Litigation Strategies & PTAB Antidotes This month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday, February 22nd @ 2PM (EST). The February Webinar is entitled: Roadblock PTAB: Litigation Strategies & IPR Antidotes. Register (here) Program Description: In the 5+ years since their inception, AIA Trial proceedings have become invaluable tools for defendants facing patent infringement claims, and thorns in the side of many patent owners. As a result, patent owners have worked hard to more... More
  • PTAB Explains Expanded Panel Rationales Expanded Does Not Equal “Stacking” As I explained previously, an expanded panel at the PTAB is an exceedingly rare occurrence.  But, as the Federal Circuit made clear in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.(here), on at least one occasion, PTAB panel expansion was utilized to drive uniformity on an inconsistently decided question of law (issue joinder). That is, an expanded panel was utilized to change the underlying decision in an issue joinder dispute.  PTAB critics were quick to latch onto... More
  • Thwart PTAB Attacks With These USPTO Post-Grant Options CRU Faster Than Before AIA, Provides Options for Patent Owners Patent reexamination filings have fallen 86% since 2012.  With the elimination of the popular inter partes patent reexamination option in 2012, an overall decrease was certainly expected.  However, ex parte reexamination filings continue to drop every year.  Only 191 ex parte reexamination requests were filed in 2017.  This was the lowest number of ex parte reexamination filings since the mid-1990s.  While an ex parte patent challenge is far less appealing to a patent challenger than a... More
  • Upcoming PTAB Related Webinars Next Week: PTAB BoardSide Chat & PatentsPostgrant.Com Webinar Next week, brings back-to-back programs on PTAB appeals, both with a unique focus. First, up, this month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday, January 31st @ 2PM (EST). The January Webinar is entitled: Building Winning PTAB Appeals to the Federal Circuit. The January PatentsPostgrant.com webinar is presented by R&G PTAB Practice Chair Scott McKeown & Appellate/Supreme Court Practice Chair Douglas Hallward-Driemeier who will offer their insights and experiences in building winning PTAB appeals to the Federal Circuit.... More
  • The PTAB Estoppel Keeping Patent Prosecutors Awake at Night Patentee Estoppel Can Shut Down Related Prosecution Patent prosecutors might consider PTAB estoppel a pure post-grant concern. That is, a litigation issue restricted to district courts after a failed PTAB challenge, or an issue raised in the context of a second-bite at the PTAB apple. But, PTAB estoppel can effect both failed petitioners and unsuccessful patent owners. Patent owner estoppel, often overlooked, is only now beginning to impact patent prosecution. Prosecutors beware. Patent owner estoppel stems from 37 C.F.R. 42.73(d)(3)(i). This rule recites that when a patent claim is cancelled or finally... More
  • CAFC to Consider Popular IPR Time Bar Exception WiFi One Opens the Door to Reconsideration of Well-Established PTAB Precedent The Federal Circuit’s softening of the appeal bar (35 U.S.C. § 314(d)) in WiFi One will now allow the Court to consider matters unrelated to the merits of an institution decision, and in some cases, well-established precedent of the Patent Trial & Appeal Board (PTAB). For example, in Oracle Corp. v. Click-to-Call Techs. LP Case IPR2013-00312, Paper 26 (Oct. 30, 2013), Section (III.A) was designated precedential.  This section explains that the dismissal of a... More