Recent Blog Posts

  • 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
  • Webinar March March Webinar to Explore the Evolution of PTAB Trial Practices This month’s edition of the free webinar series will be held on Wednesday, March 28th @ 2PM (EST). The March Webinar is entitled: Evolution of PTAB Trial Practices. Register (here) Program Description: The Patent Trial & Appeal Board (PTAB) has evolved significantly since first opening its doors in 2012 to accept AIA Trial petitions. Since that time trial institution rates have continuously tracked downward from 85+% to today’s 50-60% range. Likewise, it is now ... More
  • Standard Patent Prosecution Practices Invite Collateral PTAB Damage Continuation Applications & Terminal Disclaimers: Infectious Estoppel Patent owner estoppel is codified by Patent Trial & Appeal Board (PTAB) regulation (37 C.F.R. § 42.73(d)(3)(i)). This rule is designed — much like patent interference estoppel — to thwart patent owners from securing claims in a later USPTO proceeding that are patentably indistinct to claims lost in a PTAB trial. This regulation has largely flown under the radar relative to the more well-known statutory estoppel provisions that applies to failed PTAB petitioners. Yet,... More
  • PTAB Releases Orange Book Stats PTAB Explains Orange Book Trial Experiences In today’s Boardside Chat, the Patent Trial & Appeal Board (PTAB) explained expanded panel practice, and provided some useful insight into its work on Orange Book patents. The statistics (here) highlight: •83% of all petitions challenging Orange Book-listed patents result in the patent being unchanged by PTAB  •The cumulative institution rate for Orange Book petitions (66%) is essentially the same as the cumulative overall institution rate (68%)  •Just over half of all final written decisions for petitions challenging Orange Book-listed... More
  • Chief PTAB Judge to Discuss Expanded Panel Practice Boardside Chat Tomorrow The USPTO’s Patent Trial & Appeal Board (PTAB) is hosting a “Chat with the Chief” webinar tomorrow, Tuesday, March 13, from noon to 1 p.m. ET. Chief Judge David Ruschke will discuss “New PTAB Studies in AIA Proceedings: Expanded Panels and Trial Outcomes for Orange Book Listed Patents.” My previous fact check on Expanded Panels is found (here) Webinar Access Information for Mar. 13, 2018 at noon, E.T.:  Click on the link:  Event/Access #: 994 629 244 Event password: ChiefChat2018 Access code: 994 629 244... More
  • Senate Moves to Strip PTAB Sovereign Immunity Defenses Preserving Access to Cost Effective Drugs (PACED) Act Senator Tom Cotton (R-Arkansas) and Senator Claire McCaskill (D-Missouri) along with Senators Pat Toomey (R-Pennsylvania), Joni Ernst (R-Iowa), David Perdue (R-Georgia) introduced the Preserving Access to Cost Effective Drugs (PACED) Act (S.2514), to “restore the power of the Patent and Trademark Office and federal courts, and the International Trade Commission to review patents regardless of sovereign immunity claims made as part of sham transactions.” Introduced this past Wednesday, S.2514 is backed by a host... More
  • Oil States Result Previewed by SCOTUS? Legislative Intrusion on Article III Courts Considered in Patchek The Supreme Court provided its most up-to-date guidance on the boundaries of Article III jurisdiction relative to acts of Congress in Patchak v. Zinke, No. 16-498. This decision, issued on February 27th, previews the varying perspectives that will drive the ultimate conclusion in Oil States. Stating the holding of the Patchak plurality (6-3) most succinctly, and perhaps foreshadowing Oil States, Justice Ginsburg explained: “What Congress grants, it may retract.” The underlying dispute in Patchak involved a parcel of land (“Bradley... More
  • PTAB Related CLE (March) PTAB Bar Association & More This month brings a host of Patent Trial & Appeal Board (PTAB) related CLE offerings. First up is Managing Intellectual Property’s (MIP) U.S. Patent Forum on March 13th in New York City. This full-day forum will take an in-depth look at the USPTO & International Trade Commission (ITC) decisions of 2017 impacting patent monetization. The program also includes a segment: “Is the America Invents Act Weakening Licensing?” that will examine both tech and Bio/Pharma perspectives. Next, up is... More
  • PTAB Denies Tribal Immunity Bid Federal Statutes Applicable to Tribes Absent Expression to the Contrary In addition to the state sovereign immunity dispute now headed to the Federal Circuit, you might recall that the Patent Trial & Appeal Board (PTAB) was also considering the related question of whether sovereign immunity applies to Board proceedings involving Native American tribes. Last Friday, the Board decided that tribal immunity does not apply to USPTO proceedings in Mylan v. Saint Regis Mohawk Tribe. The decision (here) explains: Congress has enacted a generally applicable statute providing that any... More