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Recent Blog Posts

  • PTAB’s New Precedential Guidance on Follow-on AIA Petitions Expanded Panel Decision Voted Precedential On the heels of the recent issuance of an expanded panel decision in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19), Section II.B.4.i.(here), the Patent Trial and Appeal Board (PTAB) has now designated this decision precedential.  This expanded panel decision explains that applying factors to evaluate the equities of permitting follow-on petitions in AIA proceedings is a proper exercise of the Board’s discretion under 35 U.S.C. § 314 and provides a... More
  • First AIA Trial Extended Beyond 12 Months for Good Cause Aqua Products Decision Deemed “Good Cause” Earlier this month the Patent Trial & Appeal Board (PTAB) determined, for the first time, that good cause existed to extend a trial beyond the mandated 12 months of 35 U.S.C. § 316(a)(11). While the Board has had trials extend beyond 12 months in cases of joinder — an existing exception to its 12 month mandate — this is the first time that the USPTO Director exercised his discretion to extend a trial schedule for... More
  • SAS Institute & The PTAB: Be Afraid Patent Owners SAS Institute To Send Patent Owners Screaming Into the Night? The Supreme Court will get a heavy dose of the PTAB on November 27th. That is the day the High Court will hear oral arguments in both the Oil States and SAS Institute appeals. While almost all of the focus to date has been on Oil States, the case that is likely to have the biggest impact on the PTAB is SAS. As a reminder, SAS argues that partial PTAB trial institutions are inconsistent with the controlling... More
  • The Power of the PTAB Next Friday October PTAB CLE A reminder that an exciting PTAB related CLE program is a week away. Don’t miss the Chicago-Kent College of Law’s Power of the PTAB: The New Authority in Patent Law on Friday October 20th. (agenda below) Part I: Navigating the PTAB 8:35–9:35 am Reasonable Error Correction or Death Squads — Is the PTAB’s Invalidation Rate Too High or Just Right? Moderator: Paul Henkelmann (Fitch Even) Speakers: Alison Baldwin (McDonnell Boehnen Hulbert & Berghoff LLP), David Killough (Microsoft); Jay Knobloch (Trading Technologies); Daniel Ravicher (Miami); David Schwartz... More
  • Aqua Products Hoists PTAB Critics by Their Own Petard Aqua Products: A Gift to the PTAB Yesterday I explained why In re Aqua Products would not result in PTAB Motions to Amend being any more attractive or ultimately successful. This is because Motions to Amend are rarely advisable in litigation scenarios given intervening rights. And even where viable, such infringement-inspired amendments are almost always too incremental in nature to distinguish over the art. That said, Aqua Products is an absolute game changer for the agency itself. With the burden of patentability now... More
  • In Re Aqua Products: Much Ado About Nothing Federal Circuit Flips Burden in PTAB Motion to Amend For PTAB practitioners, the en banc decision in In re Aqua Products is a complete non-event. While the decision has been embraced as a net positive for Patentees, practically speaking, it will not move the needle on amending at the PTAB. Aqua Products held that it is improper for the PTAB to place the burden of persuasion on the Patentee relative to the patentability of new/amended claims. Going forward, this burden of persuasion... More
  • Patent Prosecutor’s Toolbox: The Better Half of BRI Broadest Reasonable Does not Mean Broadest Possible! The USPTO applies a broadest reasonable claim interpretation (BRI) to patents and patent applications. The abbreviation “BRI” is often used to reference the full claim interpretation standard, which is the broadest reasonable interpretation in light of the specification, from the perspective of one skilled in the relevant art. (MPEP 2111) Unfortunately, a complete BRI analysis is often mistaken by overemphasis of the “BRI” mantra. That is to say, the proper test is not simply a “broadest reasonable... More
  • PatentsPostGrant.Com September Webinar September Webinar to Focus on Expected Changes to PTAB Practice This month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday September 28th @12:30 (EST). The September webinar is entitled: The Evolution of PTAB Trial Practice (speakers: Scott McKeown & Gaby Higgins). As the title suggests, the webinar will cover the expected impact and possible changes resulting from: In re Aqua Products (Federal Circuit) Wi-Fi One, LLC v. Broadcom Corporation (Federal Circuit) SAS Institute v. Matal (Supreme Court) Oil States Energy Services, LLC v. Greene’s Energy Group... More
  • Sovereign Immunity at the PTAB a Temporary Phenomena? Oil States/CAFC to Unravel “Litigation” Premise Sovereign immunity from proceedings of the Patent Trial & Appeal Board (PTAB) has become inextricably linked with the Oil States debate now before the Supreme Court. That is, the 7th amendment argument in Oil States and the 11th amendment argument for sovereign immunity at the PTAB are both tied to the same basic, threshold premise — IPR is a trial proceeding akin to an Article III lawsuit. In Oil States, the “trial argument” is made to distinguish IPR... More
  • PTAB 5 Year Anniversary: Chat With Chief Judge Boardside Chat Tomorrow Tomorrow, Tuesday, September 12, 2017 from 12-1 p.m. ET the Patent Trial & Appeal Board (PTAB) will conduct a special “Boardside Chat” in which representatives from AIPLA, IPO, ABA, PTAB Bar Association, and Federal Circuit Bar Association will interview the Chief Judge on the 5th year anniversary of the PTAB. The program is free to attend.  Discussion topics include PTAB procedures, the latest statistics, and new developments.  The program also will include an opportunity to “Ask the Chief Judge” your questions. Webinar access information is below. Event: PTAB... More