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…
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…
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—…
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)…
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…
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…
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…
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)(…
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…