Review of APJ Appointments to Be Considered by SCOTUS Back in November of 2019 the House Judiciary Committee conducted a hearing entitled “The Patent Trial and Appeal Board and the Appointments Clause: Implications of Recent Court Decisions.” The hearing explored whether or not the Federal Circuit solution pronounced in Arthrex was effective to cure the Appointments Clause defect.  While there was some debate over whether the “fix” would hold, all of the witnesses were…

Joinder Estoppel Narrower Than Original Petition Estoppel Court’s have struggled with the meaning of the “reasonably could have raised” aspect of 315(e)(2) IPR estoppel. The CAFC has not had much opportunity to weigh in on this issue…. yet. But, last week the Court provided guidance on what is “reasonably raised” when a party joins an IPR petition under § 315(c).  Based on the Court’s decision, joinder may become a more attractive option for co-defendants…

PTAB Seeks Public Input Based on stakeholder feedback, the Patent Trial and Appeal Board (PTAB) has added an online form (here) to the USPTO website that allows any member of the public to nominate any PTAB decision for precedential or informative designation. Those nominating a decision must provide a case number, case name, and brief reasons for the nomination. They may optionally provide their name and email address. The online form is also…

Virtual PTAB Conference Offers Master Class & Boot Camp Programs Tomorrow Tomorrow, the PTAB Bar Association will hold its annual conference. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, recent developments and trends, policy considerations, and more. (This year, like all conferences, the program will be offered virtually). The 3-day conference will cover agency developments, administrative law…

Transitional CBM Challenge Program Sunsets Today The America Invents Act (AIA) placed an expiration date on Covered Business Method (CBM) challenges.  That is, CBM review proceedings were designed as a “transitional program” that would sunset 8 years from enactment of the AIA – today is that day. The legislative rationale behind setting an expiration for CBM was to target specific patents, namely, those  business method patents that issued between the State Street Bank, and Bilski…

CAFC Holds PTAB Joinder Decisions Reviewable Back in March, the Windy City panel (Prost, Plager, and O’Malley) originally held that § 315(c) was unambiguous that an existing “party” to a PTAB proceeding cannot be joined as a party.  Thereafter, the SCOTUS considered the scope of the PTAB appeal bar in its Thryv decision, holding that potential violations of § 315(b) were too closely related to the institution determination of the agency to escape § 314(d)’s appeal…

Amendment of § 256 Removed Previous Prohibition on Deceptive Intent With the AIA, Congress amended § 256 to remove the requirement that the “error” of omitting an inventor from a patent must occur without “deceptive intention.”  That is not to say that such a deceptive intention would be free from an inequitable conduct charge, but, at least for purposes of the administrative correction, intent is no longer a consideration of the agency. Few cases have…