New Pilot May Not Accelerate Post-Grant Matters Last week the United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to begin accepting petitions for expedited resolution of ex parte appeals. The program, entitled “Fast-Track Appeals Pilot Program” launched July 2, 2020. (here) But, the program may not benefit all appellants. And it is important to understand that the program is not offering an appeal timeline (start to…

Patents Post-Grant

PTAB Appointments Clause Debate: SCOTUS Preview

By Scott McKeown

July 7, 2020

Federal Government Seeks Cert on Appointments Clause & Forfeiture Issues On June 25th, the federal government filed a petition (here) for certiorari asking the Supreme Court to review the CAFC’s decisions in both Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019) and Polaris Innovations Ltd. v. Kingston Tech. Co., Inc., No. 2018-1831 (Fed. Cir. Jan. 31, 2020). This petition comes as no surprise after the CAFC’s fractured …

Patents Post-Grant

Congress Urged to Investigate PTAB Discretionary Denials

By Scott McKeown

June 30, 2020

House and Senate Judiciary Committees Alerted to “Significant and Rapidly Growing Problem” Earlier this month, a coalition of stakeholder organizations sent letters to the House and Senate Judiciary Committees seeking an investigation into the Patent Trial & Appeal Board’s (PTAB) application of discretion under 35 U.S.C. § 314(a). More particularly, the organizations argue that the Board’s application of NHK Spring is “choking off access” to the PTAB and leading to a resurgence in patent litigation of…

Patents Post-Grant

PTAB Oral Advocacy Webinar Today

By Scott McKeown

June 25, 2020

PTAB Webinar 12-1PM (EST) Today Earlier this year, the USPTO launched the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP). LEAP is designed to foster development of the next generation of patent practitioners by creating opportunities to gain the proper skills and experience in oral arguments before the Board. To this end, the PTAB is offering a LEAP webinar directed to oral advocacy today, Thursday, June 25th, from noon to 1 p.m.…

Patents Post-Grant

PTAB Reverses Discretionary Denial Based on WDTX Trial

By Scott McKeown

June 16, 2020

Board Acknowledges Slipping WDTX Trial Date Some weeks back I highlighted the institution decision in Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393), which held that despite most General Plastic Factors favoring institution, the majority felt as though a looming WDTX trial date trumped all other GP factors and denied institution. After petitioner’s unsuccessful request for a Precedential Opinion Panel (POP) hearing, the Board ordered additional briefing. Today,…

Patents Post-Grant

PTAB Adds New Settlement Precedent & Informative Opinions

By Scott McKeown

June 12, 2020

Precedent Explains Expansive Scope of 35 U.S.C. § 317(b) The Patent Trial & Appeal Board (PTAB) issued a new precedential opinion, and three new informative decisions yesterday. The precedent clarifies the agency’s read of 35 U.S.C. § 317(b) for instituted proceedings. Arguably, this precedent does not apply to pre-institution as 317(b) is limited to instituted proceedings. The informative decisions relate to fairly straightforward issues. DTN, LLC v. Farms Technology, LLC, IPR2018-01412, Paper 21 (June 14,…

Patents Post-Grant

PTAB Webinar on Potential Rule Changes

By Scott McKeown

June 8, 2020

Boardside Chat this Week The Patent Trial & Appeal Board (PTAB) will conduct a “Boardside Chat” this Thursday, June 11, from noon to 1 pm (EST) to address a number of topics including: new statistics on institution rates/final written decisions, and potential changes to AIA trial rules on institution and responsive briefing. Vice Chief Judge Mike Tierney and Lead Judge Bill Saindon will present. (access here) The webinar is free and open to all.…

Patents Post-Grant

PTAB Proposes New Rule Package – and New Preliminary Proceeding Philosophy

By Scott McKeown

May 26, 2020

NPRM to Codify Existing Practices with Notable Exception The United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking today to update its rules to conform to SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). That is, the rules now follow the holding of SAS to institute an AIA trial proceeding on all challenged claims should the petitioner meet its burden for at least one challenged claim. Additional include other rule…

Patents Post-Grant

Thryv Continues to Simplify CAFC Appeal Docket

By Scott McKeown

May 20, 2020

PTAB Appeals Focused on Merits The SCOTUS re-calibrated the PTAB’s appeal bar in Thryv, Inc v. Click-To-Call Techs., LP., explaining that potential violations of 35 U.S.C. § 315(b) were too closely related to the institution determination of the agency to escape the appeal bar. Since that time, the Federal Circuit has considered at least two additional issues that it may no longer have the ability to consider on appeal: RPI/privity disputes, and determinations that a…

Patents Post-Grant

PTAB Offers Oral Advocacy Tips for Inexperienced Attorneys

By Scott McKeown

May 13, 2020

PTAB Webinar 12-1PM (EST) This Thursday As discussed a few weeks back, the USPTO launched the Patent Trial and Appeal Board’s (PTAB) Legal Experience and Advancement Program (LEAP). LEAP is designed to foster development of the next generation of patent practitioners by creating opportunities to gain the proper skills and experience in oral arguments before the Board. To this end, the PTAB is offering the first LEAP webinar training on oral advocacy this Thursday, May 14, from…

Patents Post-Grant

Inside Views & News Pertaining to the Nation

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PTAB Fast-Track…Not So Fast

PTAB Appointments Clause Debate: SCOTUS Preview

Congress Urged to Investigate PTAB Discretionary Denials

PTAB Oral Advocacy Webinar Today

PTAB Reverses Discretionary Denial Based on WDTX Trial

PTAB Adds New Settlement Precedent & Informative Opinions

PTAB Webinar on Potential Rule Changes

PTAB Proposes New Rule Package – and New Preliminary Proceeding Philosophy

Thryv Continues to Simplify CAFC Appeal Docket

PTAB Offers Oral Advocacy Tips for Inexperienced Attorneys

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