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Patents Post-Grant: Pro Hac Vice Policy of the New Patent Trial & Appeal Board

PTAB To Exercise Discretion Relative to Non-registered Practitioners The new post grant patent proceedings of the America Invents Act (AIA) are adjudicative in nature. That is to say, Derivation, Inter Partes Review (IPR) and Post Grant Review (PGR) will be conducted as trials before the Patent Trial...

Patents Post-Grant: Enhanced Patent Reexamination Speed Coming Soon?

Reduction in Incoming Requests & InterPartes Workload to Free Up Resources Much attention has been given to the contested proceedings of the newly formed Patent Trial & Appeal Board (PTAB) since enactment of the America Invents Act (AIA) last fall. Starting in September of 2012, these new...

Patents Post-Grant: USPTO Buzz — Rule Packages and PTAB Roll Out

PTAB Rule Packages to Publish on August 14th The final rule packages for the new post grant patent proceedings of the Patent Trial & Appeal Board (PTAB) were expected to issue last week but were obviously delayed. The USPTO informed the Intellectual Property Section of the ABA (at the ABA annual...

Patents Post-Grant: Notable Changes in the Final Patent Trial & Appeal Board Rules

Final Rules Modified to Address Most Common Criticisms Yesterday's [August 14th] printing of the final rules to implement the post grant patent proceedings of the AIA is the culmination of well over a years worth of intensive, and tireless effort by the USPTO. The effort throughout 2011 led to...

Patents Post-Grant: Patent Reexamination Surge Headed to USPTO

Imminent AIA Changes to Drive Significant Patent Reexamination Filings in the Near Term In one month's time, the USPTO will simultaneously switch over to a new patent reexamination fee structure, and to a new inter partes trial model of the Patent Trial & Appeal Board (PTAB). These changes...

Patents Post-Grant: USPTO Provides “Cheat Sheet” to Final PTAB Rule Modifications

USPTO Publishes Final PTAB Trial Rule "Cheat Sheet" The below "cheat sheet" to the final rule changes was published by the USPTO yesterday [Aug. 21]. Note that the items listed are not exhaustive, but represent most of the major changes. TABLE 1: Proposed Versus Final Rules...

Patents Post-Grant: Obtaining an Electronic Filing Date at the PTAB

Satisfying the Electronic Filing Requirements of PRPS As discussed earlier this week [Aug. 20-24], the Patent Trial & Appeal Board (PTAB) of the USPTO will shortly begin rolling out a new electronic filing system to support the post grant patent trial proceedings of the America invents Act. Unless...

Fitch, Even, Tabin & Flannery LLP: Trials Before the Patent Trial and Appeal Board of the USPTO

As previously reported, last month the U.S. Patent and Trademark Office (USPTO) issued rules ("Rules") and a trial practice guide ("Guide") for trials before the newly created Patent Trial and Appeal Board (PTAB). The USPTO began conducting trials before the PTAB on September 17,...

Patents Post-Grant: Creeping Death....The Infectious Estoppel Impact of PTAB Validity Trials

So Let It Be Written, So Let It Be Done...Your Patent Portfolio That Is Two weeks back I discussed the " patentee estoppel " impact of Rule 42.73(d)(3)(1). As a reminder, when a patent claim is cancelled or finally refused in a validity trial proceeding of the Patent Trial & Appeal Board...

Patents Post-Grant: PTAB Issues Order Outlining Base Pro Hac Vice Qualifications

Expanded PTAB Panel Outlines Requirements for Unregistered Practitioners Non-registered practitioners may, in limited circumstances, be permitted to appear before the Patent Trial & Appeal Board on a pro hac vice basis. 37 C.F.R § 42.10(c) . In a previous discussion on this topic, I relayed...

Patents Post-Grant: CAFC Finds PTAB More Than Mere Umpire

Over the years, the PTAB has shed it's "super-examiner" role to more of that of an umpire- calling balls and strikes. That is to say, the PTAB has drifted toward a relatively narrower view of the scope of issues it will substantively review on appeal, perhaps as a matter of necessity in...

Patents Post-Grant: Do the Federal Rules of Evidence Apply to Patent Trial & Appeal Board Petitions?

Raising of Evidentiary Informalities Prior to Trial Institution During PTAB patentability proceedings, the Federal Rules of Evidence are applied. And, while the USPTO's definition of a "proceeding' includes the preliminary proceeding (i.e., petition filing, preliminary response) it...

NPEs Unwittingly Invite Lopsided Battles at PTAB

Stay Calculus to Encourage Multi-Defendant Attacks As the new patentability trials of the America Invents Act (AIA) have only been available for 7 months, their impact is only now beginning to be felt in the district courts. The new USPTO Patent Trial & Appeal Board (PTAB) proceedings permit...

Post Markman IPR Filing Displeases Court

Tactical Advantage Found in IPR Timing The primary business distinctions between the USPTO Patent Trial & Appeal Board (PTAB) proceedings and traditional court based patent invalidity proceedings are the vast improvements in cost, predictability, effectiveness, and speed of PTAB proceedings...

Should You Request a Rehearing of Your PTAB Trial Order?

Requests for Rehearing May Backfire on Patentees As detailed earlier this week, a patentee's decision to file a preliminary response in an IPR/CBM preliminary proceeding is not as straightforward as one would expect . Where such a preliminary response is imprudently pursued by a patentee this...

Speed of PTAB Fuels Criticism of Initial Trial Results

Critics Ignore Long Standing Realities Critics of the Patent Trial & Appeal Board (PTAB) are out in force decrying the work of the PTAB as anti-patent. This criticism flows from the unfavorable outcomes of the 30 or so concluded Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings...

PTAB Receives First PGR Petition

First PGR Petition Argues Patent is FITF Based on 112 Deficiency Last week, the first petition for Post-Grant Review was filed with the Patent Trial & Appeal Board (PTAB) (PGR2014-00008). The petition targets U.S. Patent 8,684,420, which is directed to a craft kit for making linked bracelets...

PTAB Triples in Size Since 2011

AIA Trials Drive PTAB Growth to 235+ Judges The Patent Public Advisory Committee (PPAC) held its quarterly meeting last week at USPTO headquarters in Alexandria Virginia. Updates from the USPTO included a report from the Patent Trial & Appeal Board (PTAB) on appeal and AIA trial proceedings. Much...

Fitch Even IP Alert: PTAB Once Again Denies IPR Petition Based on Procedural Considerations

On August 13, 2014, in Fidelity National Information Services, Inc., v. DataTreasury Corp. , the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) of two patents because the petition included “voluminous” references that did not clearly identify invalidity...

Leveraging PTAB Claim Analysis in the District Court

PTAB Claim Analysis Can Serve as Persuasive Authority Inter Partes Review (IPR), Post-Grant Review (PGR) and Covered Business Method (CBM) proceedings of the Patent Trial & Appeal Board (PTAB) begin with a Trial Order that includes substantial guidance on matters of claim construction. Typically...

PTAB Divided Over Practice of Issue Joinder

Expanded Panel at Odds Over Statutory Interpretation of § 315(c) Yesterday, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp ., (IPR2014-00508) ( here ). In the Order, a divided panel denied issue joinder under 35 U.S...

PTAB Expanded Panel Reverses Field on Issue Joinder

Issue Joinder within Statute, Matter of Agency Discretion At the outset of this year, I explained how Target Corp. v. Destination Maternity Corp (IPR2014-00508) was one of five Patent Trial & Appeal Board (PTAB) decisions that changed post-grant trial practice in 2014. Target was notable because...

PTAB Moves Forward on Quick-Fix Rule Changes

Page Limit Changes Effective Immediately for All AIA Trial Filings The USPTO's Patent Trial & Appeal Board (PTAB) announced some of their "quick fix" rule changes March 27 in advance of the anticipated Federal Register Notice. In addition to expected changes to page limits , the...

CAFC Ruling Calls Into Question PTAB Settlement Authority

PTAB Definition of "Proceeding" Found Inconsistent With the Law Yesterday, in Intellectual Ventures II LLC v. JPMorgan Chase & Co. ( here ) , the CAFC considered whether or not the interlocutory jurisdiction of Section 18 of the America Invents Act (AIA) is triggered by the mere filing...

PTAB & Alternative Dispute Resolution

PTAB Scheduling Orders Begin Suggesting ADR Statements The Patent Trial & Appeal Board (PTAB) has the power to terminate an Inter Partes Review (IPR), Post Grant Review (PGR), or a Covered Business Method (CBM) proceeding upon request of the parties. This discretionary power to terminate a patentability...