Ropes & Gray

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General Plastic Factors & Follow-on Petitions Last September, the Patent Trial & Appeal Board (PTAB) held that the advanced state of a district court proceeding militated in favor of denying a petition for IPR in accordance with the General Plastic factors (NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc). Given this holding, Patent Owners may now consider speedier forums, such as the International Trade Commission (ITC) as providing incremental protection from a PTAB challenge. Last week, the Board…
New Presentation of Same IPR Art Thwarted by Estoppel Post SAS, there are fewer exceptions to IPR estoppel. Indeed, the absence of partial institutions has led to many courts finding the “reasonably could have raised” aspect of IPR estoppel to be broader than just the art of the ultimate Patent Trial & Appeal Board (PTAB) trial. As such, unsuccessful petitioners are now exploring alternative theories. In The California Institute of Technology v. Broadcom Limited, et al., (…
PTAB Success a Relevant Consideration Under 35 U.S.C. § 285 After Octane Fitness, district courts “may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances,” looking at substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated. As one recent decision makes clear, not only can a successful PTAB trial aid a litigation fee dispute, but the PTAB…
Seeking More Granularity on Patent Pools? Patent pools and groupings of standard essential patents (SEPs) facilitate one-stop shopping of patent licensees. When operated fairly, these arrangements can provide meaningful efficiencies to licensors and licensees alike. On the other hand, there is also ample room for abuse given the brute strength of such large portfolios. While the Patent Trial & Appeal Board (PTAB) can be an appealing solution to combat improvidently granted patents, it is not a realistic option for an implementer…
In December 2018,  the U.S. District Court for the Southern District of New York ruled that New York’s $600 million fee on the sale of opioids into the state unconstitutionally prohibits pharmaceutical companies from passing the cost onto consumers. Furthermore, the Court ruled that the Opioid Stewardship Act (OSA) violated U.S. Constitution’s dormant commerce clause and, therefore, was unconstitutional. The OSA would have forced manufacturers and distributors of opioid medications to pay pro rata shares…
101 Guidance To Relax Patentability Standard? Today, the USPTO announced revised guidance for subject matter eligibility under 35 U.S.C. § 101 (here). The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions (here). The documents will be published in the Federal Register on Monday, January 7, 2019.  While these documents request comments from the public, both are effective on Monday. The “2019 Revised Patent Subject…
PTAB 2018: A Year of Agency Recalibration The Patent Trial & Appeal Board (PTAB) stole much of the 2018 patent law spotlight. From landmark Supreme Court decisions such as Oil States and SAS Institute, to significant en banc Federal Circuit decisions in WiFi-One, PTAB practice evolved more in 2018 than in any prior year. That said, the most impactful 2018 changes for practitioners were driven by the agency. Under the pro-patent leadership of Director Iancu, the agency…
USPTO & Congress to Tackle 101 As we close out 2018, there may be some hope on the horizon for those confounded by the current state of patent eligibility determinations under 35 U.S.C. § 101. On the legislative side, Senators Coons (D-Del) and Thom Tillis (R-N.C.) will host a closed-door meeting tomorrow, Dec. 12th, to discuss potential legislation to rework the definition of patent eligibility. Invited to this meeting are a number of large players from the tech community…
PTAB Issue Joinder Practices to End As I predicted a few weeks back, the Patent Trial & Appeal Board is now moving Proppant Express Investments, LLC, Proppant Express Solutions, LLC v. Oren Technologies, LLC, (IPR2018-00914) to the Precedential Opinion Panel (POP). This is the first case to be taken up by the new POP. As a reminder, in Proppant a divided panel denied issue joinder under 315(c), explaining that the statutory language precluded “join[ing] new issues to an existing…