Appeal Bar Dispute Heads to SCOTUS The SCOTUS has shown an affinity for disputes of the Patent Trial & Appeal Board (PTAB). Today, the Court took up its 5th PTAB dispute in three years granting cert in Dex Media Inc. v. Click-To-Call Technologies, LP. The underlying dispute in Dex relates to the one-year window of 35 U.S.C. § 315(b). As is well-known, this window precludes AIA trial petitions from a party more than one year after service of…

Term Act Seeks to Add New Bio/Pharma Litigation Hurdle It was easy to miss last week’s introduction of a new patent reform bill on the House side entitled: “Terminating the Extension of Rights Misappropriated Act of 2019” with so much focus on the Senate’s patent subject matter eligibility hearings.  The “Term Act of 2019” is described as addressing “the rising cost of prescription drugs by significantly limiting the process known as “evergreening,” whereby pharmaceutical companies make minor…

Recapture, Orita Doctrine & Same Invention Limit Scope As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a Patent Owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011) Although patent reissue allows for the correction of mistakes…

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?…