Legislation & Continued Judicial Feedback There have been a number of developments in the courts, at the USPTO, and on the legislative side over the past few months. These developments, some of which have been discussed here at length — such as the 101 legislative effort — will continue to drive new patent strategies and concerns in the months ahead.  Some quick thoughts, predictions, and some odds and ends as we head into the slower summer…

Interactions During Preliminary Proceeding Can Doom PTAB Filing Since last summer’s decisions in Applications in Internet Time, LLC v. RPX Corp., and Worlds Inc. v. Bungie, Inc., the Patent Trial & Appeal Board (PTAB) has seen RPI/privity disputes spring back to the fore. The renewed scrutiny presents challenges for petitioners participating in joint defense groups or those obligated under indemnification agreements. A precedential decision issued today by the Federal Circuit highlights the danger of new RPI and privy interactions post-petition…

PatentsPostGrant.com June Webinar June 19 marks the 5th anniversary of the Supreme Court’s impactful decision in Alice Corp. v. CLS Bank, which dramatically changed the analysis of patentable subject matter in both patent prosecution and patent litigation. Currently, a bipartisan group of Congressional members introduced what could be the first revisions to Section 101 of the Patent Act in nearly 70 years. Over the last few days, Congress has held multiple hearings on the issue, with dozens…

Plan Ahead for 101 Change With the Senate conducting marathon hearings on the subject of patentable subject matter this week (i.e., 35 U.S.C. § 101), and with significant effort to date to move legislation forward, it appears that 101 change is coming — and soon. Given the imminent legislative reset, what should you do if your patent is invalidated by the Court’s under the current 101 regime?…

Senate Judiciary Hearings Start Next Week The Senate Judiciary Committee will conduct back-to-back hearings next Tuesday and Wednesday entitled “The State of Patent Eligibility in America. The marathon fact-finding hearings come on the heels of the proposed 101 framework released last week. Each of the hearings will include three panels of five speakers. Judging on the lineups for next week, so far the deck is plainly stacked pro-reform.…

Proposed Framework Isn’t Just About Fixing 101 Since Wednesday’s release of a proposed 101 framework, some have mistakenly dismissed its legislative viability as failing to account for the interests of Big Tech — nothing could be further from the truth. The proposal is the result of months of negotiations with the major patent stakeholders, most notably the Bio/Pharma and Tech lobbies. While the Bio/Pharma side would greatly benefit from a broadening of patent…

Redundant Grounds Not An Efficient Administration of Justice Last month, the Patent Trial & Appeal Board (PTAB) issued an Order explaining that maintaining multiple, concurrent proceedings per patent presents a significant burden for the Board.  More specifically, where the same claims are challenged across multiple, redundant petitions (i.e., pile-on), the Board pointed out that instituting trial across all redundant filings may undermine the Office’s ability to complete proceedings in a timely manner and places…