Recent Blog Posts

  • 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
  • PatentsPostGrant.Com September Webinar September Webinar to Focus on Expected Changes to PTAB Practice This month’s edition of the 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
  • New PTAB Precedent Endorses In re Packard….But For How Long? PTAB Precedent (Not Surprisingly) Embraces CAFC Precedent As I pointed out last week, it is a heavy lift for the Patent Trial & Appeal Board (PTAB) to designate a precedential decision.  For this reason, nothing but the most straightforward of issues can be decided and designated “precedential.” The PTAB issued a prime example of a seemingly straightforward precedential decision a few days ago in Ex parte McAward, Appeal 2015-006416 (PTAB Aug. 25, 2017), Section I.B. (here). This PTAB precedent makes clear that the... More
  • Common Evidentiary Issues in PTAB Trials Boardside Chat Today As discussed yesterday, evidentiary issues are handled quite differently at the PTAB as compared to the district court. Right on cue, the PTAB will host a Boardside Chat today to address common evidentiary issues in AIA trial proceedings from 12-1 p.m. ET. The webinar panel will include Administrative Patent Judges Medley, Chang, and Cox.  The discussion will cover common evidence issues that occur in AIA trial proceedings before the Board. The program is free to attend. Webinar access information is below. Event: PTAB Boardside Chat Webinar Registration available online Date and time: Thursday,... More
  • PTAB Offers of Proof? Preserving The PTAB Trial Record An objection operates to preserve errors in admitting evidence. At the PTAB, the manner and timing of making evidentiary objections is governed by agency rule rather than the Federal Rules of Evidence (FRE). 37 C.F.R. § 42.64.  An Offer of Proof, on the other hand, preserves errors in excluding evidence. But, to date, Offers of Proof have not been a recognized mechanism of PTAB trials — not formally anyway.  This is despite the fact that there is no agency rule... More
  • PTAB Expanded Panels: Fact Check PTAB Expanded Panels Impact Less Than 1% of All AIA Trials Last week the Court of Appeals for the Federal Circuit (CAFC) issued its decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. (here)  The decision affirmed the USPTO’s Patent Trial & Appeal Board cancellation of certain claims of Nidec’s U.S. patent 7,626,349 (IPR2014-01121 & IPR2015-00762). In this regard, the opinion was rather unremarkable. Of particular interest to PTAB critics, however, was the Court’s discussion of the Board’s expanded panel... More
  • PatentsPostGrant.Com New Look Has a New Home and Look As announced two weeks ago, I am thrilled to join the team at Ropes & Gray. With technical difficulties now resolved, is back in business. While the graphics are a bit different, the content will continue as before. First up, is the significant amount of fake news surrounding the PTAB….more tomorrow.... More
  • Upcoming PTAB & Patent Policy CLE (Fall ’17) Post-Grant Patent Trials 2017 & More For those seeking PTAB related CLE/education the fall, there are a number of great programs on the immediate horizon. This September, the most widely attended PTAB CLE program returns, the Practicing Law Institute’s USPTO Post-Grant Patent Trials 2017. (register here) Sept. 25, 2017, New York, NY (webcast available)  Oct. 25th 2017, San Francisco, CA (webcast available)  >I am pleased to return as chair of this program along with Rob Greene Sterne of Stern Kessler Goldstein & Fox. This day-long CLE event... More
  • Separate Article III Standing Not Necessary for PTAB Appellees Article III Standing Only Necessary for Party Invoking Authority of Federal Courts Last week, I analyzed the government’s arguments supporting Article III standing for intervenors in Knowles Electronics v. Matal. In that case, the panel questioned whether the government had Article III standing to intervene in a case where the original appellee dropped out. As to the arguments presented by the government, I explained that I found the most compelling argument to be that the agency can piggyback off of the Article III... More