As part of the post-grant proceedings created in 2012 by the America Invents Act, a Patent Owner can choose to file a motion to amend its patent when that patent is challenged. See 35 U.S.C. § 316(d) (“Amendment of the patent.”); 37 CFR § 42.121 (“Amendment of the patent.”). For example, a Patent Owner may
Today, the PTO’s Patent Trial and Appeal Board (PTAB) issued a final rule related to trial proceedings under the America Invents Act. The final rule goes into effect 30 days after publication in the Federal Register (scheduled for December 9, 2020); it makes changes to institution practice and sur-replies, and eliminates an evidentiary presumption in favor of a petitioner on certain institution-related fact issues.…
Continue Reading PTAB Publishes Final Rule on Institution and Presumption in AIA Trials
To guide and inform the public about the Patent Trial and Appeal Board’s practice surrounding post-grant proceedings, the Board periodically designates certain of its decisions as precedential or informative. As noted by the PTAB:
A precedential decision establishes binding authority concerning major policy or procedural issues, or other issues of exceptional importance, including constitutional questions, important issues regarding statutes, rules, and regulations, important issues regarding case law, or issues of broad applicability to the Board. Standard Operating Procedure 2, 2-3, 11.
An informative decision provides Board norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases. Standard Operating Procedure 2, 9.
Relatedly, the Patent Office uses a Precedential Opinion Panel “to decide issues of exceptional importance to the Patent Trial and Appeal Board (e.g., issues involving agency policy or procedure).” That Panel is composed of the Director of the Patent Office, the Commissioner for Patents, and the Chief Judge of the PTAB.
Recently, the U.S. Patent and Trademark Office announced that it established two online portals, to facilitate submitting 1) requests to designate precedential and informative decisions, and 2) amicus positions regarding requests for Panel review.…
Continue Reading PTAB Adds Online Public-Submission Forms
Since the start of post-grant proceedings, the Patent Office has published a Patent Trial Practice Guide to provide a framework for conducting those proceedings, including setting out the structure and times for taking action in each of the new proceedings (e.g., Inter Partes Review and Post Grant Review). The first Trial Practice Guide issued in August 2012, and updates were issued in August 2018, July 2019, and November 2019 (Consolidated Trial Practice Guide). To guide post-grant practice, the Patent Office has also designated more than 40 decisions as precedential or informative. A topic of continued interest is the Patent Office’s practice surrounding its decision whether to institute a post-grant proceeding after a petition is filed.
Recently, the Patent and Trademark Office issued a Federal Register notice regarding a Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board. The full text of the notice can also be found in PDF format here and here.…
Continue Reading PTAB Seeks Comments On Its Approach To Institution Decisions
On October 13, 2020, the Supreme Court granted petitions for certiorari filed by the United States (in No. 19-1434), Smith & Nephew, Inc. (in No. 19-1452), and Arthrex, Inc. (in No. 19-1458) regarding the appointments of the administrative patent judges of the Patent Trial and Appeal Board. No date has been set to argue the cases, but the Court consolidated them and allotted one hour for argument time. Because the Court consolidated the cases for briefing and oral argument, it noted that “future filings and activity in the cases will now be reflected on the docket of No. 19-1434.” On December 31, 2020, the Court set oral argument for March 1, 2021.
The various petitions were granted only to the extent of “Questions 1 and 2 as set forth in the July 22, 2020 Memorandum for the United States.” See Orders List at 2.
Question 1 asks “[w]hether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior Officers’ whose appointment Congress has permissibly vested in a department head.”
Question 2 asks “[w]hether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. § 7513(a) to those judges.”
Links to the briefs, and details of the briefing schedule, are below. [Updated 1/8/2021, to reflect most current filings, and argument date]…
Continue Reading Supreme Court grants certiorari in PTAB Appointments Clause cases
The Patent Trial and Appeal Board (“Board”) recently designated two decisions as informative regarding discretionary denials of institution: Apple Inc. v. Fintiv, Inc., Case IPR2020-00019, Paper 15 (May 13, 2020), and Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case IPR2019-01393, Paper 24 (June 16, 2020). These decisions show how the Board applied the Fintiv factors established in its recent Precedential Order to determine whether co-pending district court litigation should result in a discretionary denial of institution under AIA 35 U.S.C. § 314(a). …
Continue Reading New PTAB Informative Decisions: Applying the Fintiv Factors in View of Parallel District Court Litigation
On Thursday, June 11, 2020, the PTAB designated one decision as precedential and three decisions as informative, on issues including: 1) the statutory scope of confidential settlement agreements, 2) design patent ornamentality, 3) terminating a proceeding having a pending motion to amend, and 4) use of confidential information at a hearing. …
Continue Reading PTAB Issues Precedential Decision to Clarify 35 U.S.C. § 317(b) Collateral Agreements, and Three Informative Decisions
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.
The Patent Trial and Appeal Board (“the Board”) recently designated Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020), as precedential. The decision provides practitioners a six-factor analysis that the Board will employ when assessing whether to apply its discretion to deny institution when there is co-pending district court litigation. …
Continue Reading PTAB Precedential Decision Offers Guidance on Discretionary Denials of Institution in Light of Co-Pending Litigations
As background, in Proppant, the POP addressed the following issues:
- Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
- Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
- Does the existence of a time bar under § 315(b), or any other relevant facts, have any impact on the first two questions?
The POP determined that § 315(c) “provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding.” IPR2018-00914, Paper 38, at 4.
In Facebook, Inc., v. Windy City Innovations, LLC, the Federal Circuit reversed the POP opinion. 953 F.3d 1313 (Fed. Cir. 2020) (the “Decision”). Specifically, the court held that “[t]he clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues.” Decision at 1322. …
Continue Reading Federal Circuit Reverses PTAB’s Precedential Opinion Panel on Aspects of Joinder