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Recent Blog Posts

  • 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
  • PTAB Revisited: Avoiding Federal Circuit Remands Remand or Reversal? Appeals from the Patent Trial & Appeal Board (PTAB) have now become a major component of the Federal Circuit’s docket. Given the deferential “substantial evidence” standard accorded PTAB decisions, upward of 60% of such appeals are simply affirmed — many without further comment. The remainder of PTAB appeals  include a mixed bag of partial affirmances, reversal and/or remands. While both reversal and remand outcomes are appellate “wins” for Patent Owners, a remand for a Patent Owner is often a winning of the Federal Circuit... More
  • PTAB Invites Amicus Input on Sovereign Immunity Dispute Tribal Immunity Considered by 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. This premise has been criticized by the Supreme Court in In re Cuozzo Speed Technologies, and, more recently by the Federal Circuit in Ultratec, Inc. v. Captioncall, LLC, 2017, (Fed. Cir. Aug. 28, 2017). For this reason, sovereign... More
  • Oil States/SAS: The Aftermath Special PatentsPostGrant.com Webinar 11/28 On Monday, November 27th, 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. The day after, November 28th, PatentsPostGrant.com 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 McKeown, Douglas Hallward-Driemeier and Matthew... More
  • Patent Prosecutor’s Toolbox: Claiming User Functionality User Activities vs. User-Driven, Hardware Function Every so often a decision comes out of the Federal Circuit that has immediate value for patent prosecutors. Yesterday’s decision in Mastermine Software, Inc. v. Microsoft Corp., is one such case. In Mastermine, the Court considered the extent to which user-initiated methodology of a Customer Relations Management (CRM) system may be recited in system claims. The district court found certain claims of the patents-in-suit (7,945,850 & 8,429,518), indefinite for improperly claiming two different subject-matter classes citing IPXL Holdings,... More
  • PTAB to Host “Chat with the Chief” on Tuesday 10/24 Chat with the Chief The PTAB is hosting its first “Chat with the Chief” webinar tomorrow, Tuesday, Oct. 24, from noon to 1 p.m. ET, on the topic of multiple AIA trial petitions. Chief Judge David Ruschke will discuss new stats about multiple petition filings, the General Plastic precedential decision addressing the factors the Board applies in deciding whether to institute follow-on petitions, and Board case management techniques. He also will answer audience questions. The “Chat with the Chief” is free and open to... More
  • 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