Litigators Amending Claims? Patent prosecution bars are prophylactic provisions typically included in district court protective orders when there is a risk that a recipient of confidential technical information may use (inadvertently or otherwise) that information while prosecuting patent applications in related technology. Prosecution bars eliminate this risk by preventing individuals who have access to technical information from directly or indirectly drafting, amending, advising, or otherwise affecting the scope of patent claims in a technical field…

Patents Post-Grant

Top 5 PTAB Developments of 2020 for District Court Litigators

By Scott McKeown

January 8, 2021

New PTAB Roadblocks & Strategies Earlier this week I laid out my Top 5 PTAB cases of 2020 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like the practitioner list, my Top 5 PTAB developments of 2020 for District Court Litigators will focus on those practical PTAB developments that will impact parallel litigation practices outside of the agency. In 2020, there were a number developments of interest to…

Patents Post-Grant

PTAB Applies Nautilus 112 Standard to AIA Trials…For Now

By Scott McKeown

January 7, 2021

Director Memo Decides Against Standard of In Re Packard Back in 2018 I noted the current PTO administration had backed away from a dispute on the appropriate 112 standard to apply in AIA trials (after intervention by the previous PTO administration). That is, the initial intervention sought to support the application of the standard enunciated by In re Packard to AIA trial proceedings. After Director Iancu came on board, that Intervenor Brief was withdrawn. Today,…

Patents Post-Grant

Top 5 PTAB Decisions of 2020

By Scott McKeown

January 6, 2021

2020: POP Precedents & Director Driven Changes In 2020, the Board continued to expand 314(a) discretion through numerous Precedential Opinion Panel (POP) decisions. These decisions, among a number of other developments, demonstrated a clear interest on the part of the current Director to rebalance AIA trial proceedings in the direction of patent owners. At the same time, the agency experienced increasing push back from larger innovator organizations — often subject to frivolous patent litigation—…

Patents Post-Grant

PTAB Adds 314(a) Precedent to Clarify Value of Estoppel Stipulations

By Scott McKeown

December 17, 2020

Another Day, Another 314(a) Discussion On the heels of its precedent of a week or so back, the PTAB is adding more to the swirling hairball known as the “Fintiv factors.” First, the Board has clarified that agreeing to IPR estoppel proactively (before institution) and not pursuing such grounds in the parallel infringement proceeding, is a strong factor in favor of institution. Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (Dec. 1, 2020)…

Patents Post-Grant

314(a) To Block All ITC Disputes from PTAB?

By Scott McKeown

December 10, 2020

POP to Decide Further Extension of 314(a)? A year or so back, I discussed a 314(a) dispute at the Patent Trial & Appeal Board (PTAB) where the Board considered a co-pending ITC investigation. In that decision, the Board instituted trial, pointing out that “the ITC does not have the authority to invalidate a patent and ITC decisions do not necessarily pertain to the issues raised in an inter partes review petition.” More recently the applicability of…

Patents Post-Grant

PTAB to Eliminate Institution Presumption on January 11th

By Scott McKeown

December 9, 2020

Final Rule Package Updates Current PTAB Practices with Two Additions The USPTO will publish a final rule package today (draft here) that largely presents the earlier Notice of Proposed Rule Making in final form. Most of the changes addressed rules outdated by the SCOTUS decision in SAS Institute, or simply codified existing practices, such as sur-replies. As such, the bulk of the earlier proposals were not controversial. However, the earlier Notice also proposed…

Patents Post-Grant

PTAB to Discuss Multiple Petitions This Week

By Scott McKeown

December 8, 2020

Boardside Chat Focuses on Multiple Petition Outcomes This coming Thursday, December 10th, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) will offer its next Boardside Chat Webinar to discuss several aspects of PTAB trial proceedings. Lead Judge Bill Saindon will present the results of the PTAB’s recently updated multiple petitions study. Lead Judges Jessica Kaiser and Michelle Ankenbrand will share preliminary results of the Motion to Amend Pilot Program. Lead…

Patents Post-Grant

PTAB Adds to RPI/314(a) Precedent

By Scott McKeown

December 7, 2020

Designation of Additional Cases Clarify Basis for RPI Disputes Last Friday the Patent Trial & Appeal Board (PTAB) added to its list of precedential cases. The new precedent clarifies when RPI disputes will be considered by the Board, what factors will be considered for petitions lodged by member organizations, and whether joinder can be leveraged by a failed petitioner. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential)(…

Patents Post-Grant

PTAB Debunks Multiple Petition Criticisms in Newly Released Statistics

By Scott McKeown

December 3, 2020

Abusive Petition Practices Effectively Controlled by PTAB Once upon a time, the Patent Trial & Appeal Board (PTAB) accepted AIA trial petitions that attacked a subject patent in a serial fashion. That is, typically, a group of defendants of a multi-defendant suit would stagger their filings against a subject patent. For example, Company A would file first, after seeing the Patent Owner’s Preliminary Response to Company A, Company B would file, and then after the…

Patents Post-Grant

Inside Views & News Pertaining to the Nation

Blog Authors

Prosecution Bars & The PTAB – An Evolving District Court View

Top 5 PTAB Developments of 2020 for District Court Litigators

PTAB Applies Nautilus 112 Standard to AIA Trials…For Now

Top 5 PTAB Decisions of 2020

PTAB Adds 314(a) Precedent to Clarify Value of Estoppel Stipulations

314(a) To Block All ITC Disputes from PTAB?

PTAB to Eliminate Institution Presumption on January 11th

PTAB to Discuss Multiple Petitions This Week

PTAB Adds to RPI/314(a) Precedent

PTAB Debunks Multiple Petition Criticisms in Newly Released Statistics

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