Patents Post-Grant

Inside Views & News Pertaining to the Nation

Blog Authors

Hodo Ahmed

Latest from Patents Post-Grant

Patents Post-Grant

PatentsPostGrant.com Webinar this Wednesday

By Scott McKeown on September 17, 2019

September Webinar to Focus on RPI/Privy Issues The September edition of the PatentsPostGrant.com webinar series will be held this Wednesday September 18th@ 2-3PM (EST). The September program is entitled Avoiding PTAB Pitfalls: Indemnification & Joint/Common Interest Agreements. The webinar will explore the increasing complexities of real party in interest (RPI) and privity determinations before the USPTO Patent Trial & Appeal Board (PTAB). In particular, the webinar will focus on multi-defendant disputes, and the risks/considerations in joining joint defense…

Patents Post-Grant

Political Theater & The Stronger Patents Act

By Scott McKeown on September 13, 2019

Lack of Stakeholder Consensus on 101 Effort The sponsors of the promised bill to reform 35 U.S.C. § 101 are struggling to regain earlier momentum. It seems that the inclusion of the 112(f) provision (designed to bring Big Tech to the table on an otherwise unwelcome reform effort) has not been effective. Worse, the 112 provision has actually turned off some in Bio/Pharma. As such, the 101 bill promised back in July now appears to be slipping to October. Given the recent complications, the Stronger Patents …

Patents Post-Grant

PTAB Adds Precedent & Hearing Room Features

By Scott McKeown on September 10, 2019

PTAB Designates Two Older Decisions as Precedential, Updates Hearing Rooms/Notices The Patent Trial & Appeal Board (PTAB) has designated two more decisions precedential. The first addresses the 315(b) fling deadline, while the other pre-institution statutory disclaimer. In addition to expanding precedent, the Board has also expanded hearing room space and options.…

Patents Post-Grant

Recoverability of PTAB Fees in Exceptional Cases

By Scott McKeown on September 6, 2019

Exceptional Cases & The PTAB As discussed last month, as PTAB proceedings conclude at the Federal Circuit and return to the district courts, courts are finding themselves faced with new questions on estoppel. Another question that has been recently posed for successful PTAB challenges is whether, and to what extent, a prevailing party in an “exceptional” case (35 U.S.C. § 285) can obtain fees for work done at the PTAB? Once again, the answer may depend…

Patents Post-Grant

Boardside Chat Today on Latest PTAB Precedent

By Scott McKeown on September 5, 2019

Precedential & Informative Decision Update Today The Patent Trial and Appeal Board (PTAB) will host a Boardside Chat webinar today, from noon to 1pm (EST). Vice Chief Judge Scott Weidenfeller, Judge Kevin Cherry, and Judge Amanda Weiker will discuss PTAB decisions designated over the summer as precedential and informative. The PTAB held a similar webinar last spring to discuss cases designated as of that time. This webinar will pick up from where the last one…

Patents Post-Grant

101 Bill Coming This Fall

By Scott McKeown on September 4, 2019

Bill Delayed for Stakeholder Feedback With June’s flurry of Senate hearings on the subject of patentable subject matter (i.e., 35 U.S.C. § 101), the previously announced plan was to release a draft reform bill in July. The draft was to be based on the outline of the framework discussed in the earlier hearings. Of course, July came and went without a bill as sponsors struggled with, among other issues, the functional claiming control (112 provision) included in the proposed framework. (Critics argued, incorrectly, that…

Patents Post-Grant

September PTAB CLE

By Scott McKeown on August 29, 2019

RPI/Privy Disputes Become More Complex + PLI PTAB Trials 2019 As we move into the fall season, a host of bar association programs are on the horizon from IPO, AIPLA and others. But first, a few options for PTAB focused CLE in September. The PatensPostGrant.com webinar series returns from summer hiatus, and the longest running and most widely attended PTAB CLE program, PLI’s full-day PTAB trials program returns to NYC.…

Patents Post-Grant

No Exceptions to PTAB Time Bar

By Scott McKeown on August 26, 2019

Precedential Opinion Panel Reverses Decision on 315(b) Earlier this year the Patent Trial & Appeal Board (PTAB) instituted trial in Sling TV, L.L.C. et al. v. Realtime Adaptive Streaming, LLC, IPR2018-01331, Paper 9 (PTAB January 31, 2019). In doing so it created a new exception to the 315(b) time bar. The exception explained that the trigger for 315(b) — service of the complaint — was ineffective if the true patent owner was not responsible for the filing. At the time, I …

Patents Post-Grant

Courts Continue to Explore Reach of PTAB Estoppel & Standards for Assessing Exceptions

By Scott McKeown on August 22, 2019

“Known or Used” Not a Side-Step to PTAB Estoppel Keeping with yesterday’s discussion of Patent Trial & Appeal Board (PTAB) estoppel in the district courts, a decision from earlier this year on yet another aspect of this estoppel has been recalibrated. Back in January, the Central District of California explained in The California Institute of Technology v. Broadcom Limited, et al., that IPR estoppel (35 U.S.C. § 315(e)(2)) applies where the same IPR reference is later raised in court under the “known …

Patents Post-Grant

Physical Counterparts of PTAB Utilized Product Manuals Estopped in Some Districts

By Scott McKeown on August 21, 2019

User Manuals & Corresponding Product Estoppel under 315(e)(2) District courts continue to grapple with whether or not physical products described by prior art publications of an earlier Patent Trial & Appeal Board (PTAB) trial are subject to estoppel. That is, by virtue of utilizing product manuals in the earlier PTAB proceeding, whether the actual products described “were raised, or reasonably could have been raised” under 35 U.S.C. § 315(e)(2). The view of some districts has been that it does not, unless the Patent Owner (estoppel proponent)…