On November 2, Senator Thom Tillis—the ranking member of the Senate Judiciary Committee’s Subcommittee on Intellectual Property—sent a letter to acting PTO Director Andrew Hirshfeld expressing concern about the PTAB’s use of “unrealistic” trial schedules to guide institution denials under Apple v. Fintiv.
Continue Reading Senator Tillis Asks the PTO to Reconsider Fintiv Factor Two
Andrew T. Dufresne
How reliable are trial dates relied on by the PTAB in the Fintiv analysis?
In recent years, the Patent Trial and Appeal Board has frequently declined to institute IPRs for procedural reasons unrelated to a petition’s substantive strength. In particular, the Board has increasingly denied petitions in view of related, parallel litigation that it perceives as so far advanced that it would be most efficient to deny institution and leave patentability issues to be resolved in the other forum. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (Precedential). Key among the factors guiding those Fintiv denials is whether and to what extent the other proceeding’s trial date is scheduled to precede the Board’s deadline for issuing a final written decision, i.e., Fintiv factor two. Id. at 9.
But how reliable are those trial dates?
Continue Reading How reliable are trial dates relied on by the PTAB in the Fintiv analysis?
What Qualifies as a Good “Good Cause” When Responding to a Patent Owner’s Preliminary Response?
In an inter partes review proceeding, the petitioner first files a petition to challenge the validity of a patent. In response to the petition, the patent owner can file a POPR. Typically, the PTAB then decides whether to institute an IPR trial. In recent years, the rules have provided petitioners with an option to reply to the POPR. But such replies are not available as a matter of right—petitioners must request leave to file from the PTAB.
The PTAB has discretion to either grant or deny the request, depending on whether the request satisfies “a showing of good cause” under 37 C.F.R. § 42.108(c). If the PTAB grants the request, then typically, the petitioner and patent owner both receive authorization to file another brief paper, usually around five pages, before the PTAB issues an institution decision.
To date, it has not been clear what qualifies as “good cause” when a petitioner decides to reply to the POPR. Is the filing of a reply a strong predictor of the institution decision? We analyzed the role of petitioners’ replies to POPRs in recent PTAB proceedings, and our research provides a fresh view on the replies’ impact on corresponding institution decisions. In addition, our findings include updated practice tips for IPR practitioners.Continue Reading What Qualifies as a Good “Good Cause” When Responding to a Patent Owner’s Preliminary Response?
Federal Circuit confirms that the PTAB can consider the patent eligibility of substitute claims proposed during an IPR
By Andrew T. Dufresne on
In Uniloc 2017 LLC v. Hulu, LLC, No. 2019-1686 (Fed. Cir. July 22, 2020), the Federal Circuit considered whether the AIA permits the PTAB to reject substitute claims proposed during an IPR for patent ineligibility under § 101.
Continue Reading Federal Circuit confirms that the PTAB can consider the patent eligibility of substitute claims proposed during an IPR
USPTO announces proposed rule changes on presumptions at institution and briefing permitted for patent owners during trial, among others
By Andrew T. Dufresne on
Posted in PTAB Procedures
On May 26, 2020, the USPTO announced several proposed rule changes for IPR, PGR, and CBM proceedings. If implemented, the proposed rules would:
- Eliminate the presumption in favor of petitioners at the institution stage. The Board began allowing patent owners to include testimonial evidence with their preliminary responses in 2016, but since then it has viewed any issues of fact created by such evidence “in the light most favorable to the petitioner solely for purposes of deciding whether to institute.” 37 C.F.R. §§ 42.108(c), 42.208(c). The new rules would eliminate that presumption.
Federal Circuit Holds that PTAB Judges Were Unconstitutionally Appointed
By Andrew T. Dufresne on
Last week, we wrote about Arthrex, Inc. v. Smith & Nephew, Inc. and described recent developments that suggested the Federal Circuit was leaning toward holding that all current PTAB judges had been unconstitutionally appointed in violation of the Appointments Clause of Article II. The Federal Circuit has now done just that
Continue Reading Federal Circuit Holds that PTAB Judges Were Unconstitutionally Appointed
Constitutional Challenge under the Appointments Clause May Upend PTAB Proceedings
By Nathan K. Kelley & Andrew T. Dufresne on
An order from the Federal Circuit on October 15 suggests the court may be close to holding that the PTAB has been operating in violation of the Appointments Clause, which could significantly disrupt PTO operations. The case presents important questions: whether the PTAB’s judges have been lawfully appointed, and if not, what happens to decisions that have been issued by panels of those judges?
Continue Reading Constitutional Challenge under the Appointments Clause May Upend PTAB Proceedings
Federal Circuit Rejects Latest Constitutional Challenge to Inter Partes Review
By Andrew T. Dufresne on
Posted in Appeals, Supreme Court
On July 30, the Federal Circuit issued a decision in Celgene Corporation v. Peter (Nos. 2018-1167, -1168, -1169, and -1171), where the patent owner argued that the PTAB’s authority to cancel claims through IPR amounted to an unconstitutional taking as applied to pre-AIA patents. Numerous patent owners have raised similar challenges since the Supreme Court expressly reserved judgment on the issue in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1379 (2018). The Federal Circuit’s decision puts that issue to rest (at least for now) and confirms that all issued patents remain subject to IPR.
Background
The Celgene appeal arose
Continue Reading Federal Circuit Rejects Latest Constitutional Challenge to Inter Partes Review
PTAB Applies Statutory Grace Period for Weekends and Holidays to IPR Petitions
By Andrew T. Dufresne on
On February 20, 2019, the PTAB held that the statutory grace period for PTO papers and fees due on a weekend or federal holiday applies to the one-year deadline for filing IPR petitions under 35 U.S.C. § 315(b). Under longstanding PTO practice, the Office has accepted filings after a formal deadline if that deadline fell on a weekend or federal holiday and the filing is completed on the next
Continue Reading PTAB Applies Statutory Grace Period for Weekends and Holidays to IPR Petitions
Federal Circuit Upholds PTAB Decision Finding Library Website’s Indexing and Search Capabilities Insufficient to Establish Public Accessibility
By Andrew T. Dufresne on
As we have reported in several recent posts, the PTAB often rigorously evaluates public accessibility when considering non-patent prior art. Disputes over accessibility are often pivotal because insufficient evidence of accessibility can disqualify a reference as a “printed publication” under § 102. The Federal Circuit recently expanded on the applicable standard for online publications in a case rooted in computer technology, but the decision provides relevant insights for life science practitioners as well.
Continue Reading Federal Circuit Upholds PTAB Decision Finding Library Website’s Indexing and Search Capabilities Insufficient to Establish Public Accessibility