Latest from Buchanan PTAB Report

As a result of the recent Supreme Court decision in U.S. v. Arthrex, Inc., the USPTO implemented an interim review procedure where review of a PTAB final written decision may be initiated by the Director or requested by a party to a PTAB proceeding.  In its first decisions on requests for Director review, the USPTO denied the requests and noted that “the Patent Trial and Appeal Board’s Final Written Decision in this case is the…
The Supreme Court issued a decision today in U.S. v. Arthrex, Inc. upholding the use of inter partes reviews (IPRs) to challenge the validity of issued patents under the America Invents Act. While the Court determined that administrative patent judges (APJs) of the USPTO’s Patent Trial and Appeal Board (PTAB) were unconstitutionally appointed, the Court fixed the problem by providing the USPTO Director with the ability to review final PTAB decisions and issue decisions on behalf of the Board. …
On Monday, April 5, Todd Walters, Chair of the firm’s Patent Office Litigation practice and Co-Chair of the Intellectual Property section, will be presenting to members of the United States Patent and Trademark Office’s Legal Experience and Advancement Program (LEAP). The session entitled, “The ‘Perfect’ Oral Argument” will cover how to present an ex parte appeal before a panel of Patent Trial and Appeal Board (PTAB) judges.  This event does not require pre-registration. Join the…
On March 15, 2019, the USPTO implemented a pilot program making certain changes to motion to amend practice in AIA trial proceedings. Historically, motions to amend have been filed in only 11% of AIA trial proceedings, demonstrating their lack of popularity. The vast majority of motions, 86%, filed prior to the pilot program were denied. In view of this context, the USPTO developed the pilot program to provide “an improved amendment practice in AIA trials … that is…
The USPTO issued guidance on the standard for addressing indefiniteness in AIA trial proceedings.  The PTAB will apply the Nautilus standard in AIA trial proceedings which is the same standard used by district courts and the ITC. As background, the USPTO historically applies the standard articulated in In re Packard, 751 F.3d 1307 (Fed. Cir. 2014) for assessing indefiniteness in ex parte patent examination.  District courts, on the other hand, assess indefiniteness under the standard…
The USPTO published a final rule relating to AIA trial proceedings before the Patent Trial and Appeal Board (“PTAB”).  The final rule addresses three aspects of AIA trial proceedings.  First, the rule formally implements the PTAB’s current guidance concerning the scope of institution in view of the Supreme Court’s decision in SAS Institute.  Under current practice, if the PTAB institutes review, trial proceeds on all challenged claims and on all asserted grounds of unpatentability presented…
The USPTO recently issued comments concerning the impact of the PTAB’s motion to amend (“MTA”) pilot program on AIA trials. The PTAB’s MTA pilot program was implemented in March of 2019.  The pilot program provides a patent owner with two options.  First, the patent owner can request preliminary guidance from the Board on its MTA.  Second, the patent owner may file a revised MTA in response to the preliminary guidance received from the Board or,…
The transitional Covered Business Method (CBM) review program saw its end on September 16, 2020. Under the CBM review program, a party believing that a patent directed to a financial product or service did not cover patentable subject matter (i.e., the invention was directed to a “business method”) could petition the Patent Office to institute a review of the patent to determine whether it covers a patentable invention. This review provided a less costly alternative…
The U.S. Patent and Trademark Office (USPTO) has announced a Fast-Track Appeals Pilot Program to allow an Appellant to have an ex parte appeal advanced out of turn. The effective date of the program is July 2, 2020. The target is to have a decision on the appeal within six months of entry into the program. To qualify, an Appellant must satisfy four conditions: The application must be an original utility, design or plant non-provisional application.…
The PTAB designated one decision as precedential and three decisions as informative, providing practitioners with guidance on trial practice and procedure before the Board. Submission of collateral agreements referred to in settlement agreements In DTN, LLC v. Farms Technology, LLC, IPR2018-01412, Paper 21 (Jun. 14, 2019) (precedential), the parties reached settlement and jointly requested termination of the proceeding.  The parties submitted the settlement agreement and collateral agreements referenced in the settlement agreement and jointly requested…