Reexamination Deference?
The excessive scope of the PTO’s Advanced Notice of Proposed Rulemaking (ANPRM) on AIA Trial practices is deliberate as it provides favorable optics for the current administration.
Presenting all ideas to the public as opposed to culling out
Boardside Chat Tuesday
This Tuesday (noon to 1PM EST), the PTAB will conduct a webinar Information Session with the Under Secretary of Commerce for Intellectual Property and Director of the USPTO Kathi Vidal to address the recently published Advance Notice
Word Count Fees, Inflationary Bump, & Director Review
As I discussed earlier this week, the USPTO has released a laundry list of proposed practice changes for consideration — some, good, some bad, some ugly. One of the better ideas
Unnecessarily Ambitious
Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long
Burden on Proponent of Affirmative Defense
Back in 2016 district courts started encountering infringement suits where the subject patents had survived PTAB challenge. In such scenarios, estoppel applied to failed petitioners under 35 U.S.C. § 315(e)(2). To asses whether invalidity
Rule Effort Worthwhile?
Back in November of 2021, the Northern District of California dismissed an APA lawsuit filed by a number of large companies seeking to challenge the PTAB’s NHK-Fintiv practices. At that time, I opined that the Court had
Declarations Are Often Limited in Scope & Content
The USPTO Director issued a precedential decision last month in Xerox Corp. v. Bytemark, Inc. that explained declarant testimony that merely repeats, verbatim, conclusory assertions of the petition (without citing additional evidence
Fintiv Not a Single Step Framework
USPTO Director Vidal has issued a number of sua sponte Director decisions since her arrival. I haven’t bothered discussing them here as the majority are directed to rather unique 314(a) fact patterns that are
Panel Dependency Reinforces Bad Behaviors
As discussed last October, the Patent Trial & Appeal Board’s (PTAB) lack of consistency in addressing attorney misbehavior is a growing problem. Whether PTAB panels are busy attending to statutory deadlines on their docket, or
Estoppel Future Uncertain
As pointed out last month, the SCOTUS has sought the Solicitor General’s input in Apple et al., v. California Institute of Technology. If the case is taken up, the Court will consider limiting the scope of IPR
