LexisNexis® Legal Newsroom
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...

Philips Construction at PTAB...Still Want It After B&B Hardware?

B&B Hardware Emphasizes Risks of Patentee Legislative Initiatives A week back the U.S. Supreme Court decided B&B Hardware, Inc. v. Hargis Indus., Inc. , No. 13-352, slip op., 575 U.S. __ (2015) [ an enhanced version of this opinion is available to lexis.com subscribers ]. In B&B , the...

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...

PTAB Adjusts Standard Operating Procedures (SOP1)

Changes Clarify Expanded Panel Use & Single APJ Institution Decisions As discussed on last week, recent informative decisions explain the PTAB process for designating expanded panels for AIA trials . To apply the expressed rational of these decisions to the entirety of the Board, the Patent Trial...

New PTAB Rules Effective 5/19

May 19's Federal Register Notice provides the long awaited "quick-fix" rule changes. The rules codify the changes announced on Director Lee's March 27th blog post , which provided for the use of a claim appendix in Motions to Amend, expanded page limits for such Motions, and expanded...

PTAB Considers Unplugging Hedge Fund Filings

Hedge Fund IPR Scheme Unraveling Last week, the USPTO's Patent Trial & Appeal Board (PTAB) authorized a Motion for Sanctions in four IPR proceedings filed by the now infamous Kyle Bass & friends. The motion for sanctions will be based on an alleged abuse of process by Bass & Co. for...

Is RPI/Privity an Issue of PTAB Standing?

CAFC Finds Board Has Power to Vacate Institution Decision Sua Sponte The Patent Trial & Appeal Board (PTAB) posed the following question to the public last summer in its Request for Comments : Real Party in Interest: 5. Should a patent owner be able to raise a challenge regarding a real party...

PTAB's Use of Broadest Reasonable Interpretation Upheld ... Again

En Banc Rehearing of Cuozzo Appeal Denied In a close decision, the Court of Appeals for the Federal Circuit (CAFC) denied rehearing in In re Cuozzo Speed Technologies (here) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ]. At issue in the request for en banc...

PTAB Cheat Sheet for House Bill

[UPDATE: Given the burgeoning opposition to the "Innovation Act" (H.R. 9) , the current bill was pulled from floor consideration this morning. Back to the drawing board. As to at least the PTAB changes, the focus can now appropriately turn to the imminent rule package of the agency. USPTO...

Federal Circuit Upholds Broadest Reasonable Interpretation in CBMs but Revisits Reviewability of Institution Decisions

In its second case in as many days touching on both the broadest reasonable interpretation (BRI) standard and the reviewability of institution decisions, the U.S. Court of Appeals for the Federal Circuit both agreed and disagreed with itself. On July 9, 2015, in Versata Development Group, Inc. v. SAP...

Beginning of the End for Kyle Bass & Friends

Motion for Sanctions Details True Hedge Fund Motives On Wednesday, Celgene filed its Motion for Sanctions against the Coalition for Affordable Drugs in IPR2015-01092, 1096, 1002, and 1103. The Patent Trial and Appeal Board (PTAB) now has until October 28th to decide the issue. As I have maintained...

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

by Stephen B. Maebius Yesterday, the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules...

PTAB Issues Rule Long Awaited Rules Package

Expected Changes to Patentee Preliminary Response Among Noteworthy Changes The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here ). The proposed changes are largely expected given the d iscussion coming out of the agency for months on these...

Plaintiffs Beware: PTAB Fee Awards Might Be Headed Your Way

PTAB + Octane Fitness = Problem Back in 2014, I explained that the recent shift in exceptional case analysis under Octane Fitness, LLC v. ICON Health & Fitness, Inc . and Highmark Inc. v. Allcare Health Mgmt. Sys ., would provide opportunity for successful Patent Trial & Appeal Board (PTAB...

Federal Circuit Affirms PTAB in First Decision on an Appeal of America Invents Act Business

by K. Patrick Herman and Christopher W. Glynn Digest of Versata Dev. Group, Inc. v. SAP Am., Inc. , No 2014-1194 (Fed. Cir. July 9, 2015) (precedential) [subscribers can access an enhanced version of this opinion: lexis.com | Lexis Advance ]. On appeal from the United States Patent and Trademark...

PTAB Considers Single Judge Pilot Program

Pilot Program to Limit APJ Review For IPR Institution As promised in last week's rule package , a second Federal Register Notice ( here ) has issued from the USPTO's Patent Trial & Appeal Board (PTAB). This Notice, entitled: Request for Comments on a Proposed Pilot Program Exploring an...

PTAB Ruling Breaks Ranks With Supreme Court and Federal Circuit

by Brian S. Mudge and Tiffany Mahmood In a recent trial institution decision, the Patent Trial and Appeal Board held that a business method patent for trading securities was patent eligible under 35 U.S.C. § 101. The case, Chicago Mercantile Exchange, Inc. v. 5th Market, Inc. , CBM2015-00061...

Kyle Bass Now 0-3 at PTAB With More Pain to Come

Patents in the Unpredictable Arts No Easy IPR Mark Back in January of last year Kyle Bass introduced himself to the patent community through a series of brash, public pronouncements on a perceived lack of quality in drug patents . His stated intention was to "knee cap" drug companies by...

CAFC Finds Prior Art Status of Patent Depends on Claim Scope?

Prior Art 102(e) Date of Provisional Filing Linked to Scope of Utility Patent Claims? Last Friday the Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial & Appeal Board (PTAB) in Dynamic Drinkware LLC v. National Graphics Inc. IPR2013-00131 ( here ). While...

Second Pilot Announced to Expedite Ex Parte PTAB Appeals

Second Pilot Directed to Small & Micro Entities Back in June, the PTAB began a pilot program to allow appellants with multiple ex parte appeals pending before the Board to expedite review of one appeal in return for withdrawing another. The stated purpose of the Expedited Patent Appeal Pilot is...

Proposed PTAB Rule Change May Backfire on Some Patentees

Patentees Back Themselves Into a Corner at PTAB Both patentees and challengers alike were displeased with inter partes patent reexamination prior to the America Invents Act (AIA). Inter partes patent reexamination was too slow to serve as a true alternative to litigation for patent challengers, and...

PTAB Denies Sanctions in Hedge Fund Filings

Board Finds Profit Motive Acceptable for IPR While all hedge fund filings considered by the PTAB to date have failed on the merits ( Kyle Bass is 0-3 & Ferrumo Capital 0-1), today, the Board declined to outlaw such filings as a matter of policy. In IPR2015-01092, 1096, 1002, and 1103, Patentee...

PTAB Moves Toward Consistency on Question of Issue Joinder

New De Facto Precedent on Question of Issue Joinder In Target Corp. v. Destination Maternity Corp (IPR2014-00508), the Board departed from previous PTAB practice on issue joinder for the first time. That is, up until Target , a same petitioner was able to join a first-filed petition with a later filed...

PTAB Moves Toward Consistency on Question of Issue Joinder

New De Facto Precedent on Question of Issue Joinder In Target Corp. v. Destination Maternity Corp (IPR2014-00508), the Board departed from previous PTAB practice on issue joinder for the first time. That is, up until Target , a same petitioner was able to join a first-filed petition with a later filed...

USPTO Proposes Hike in PTAB Fees for 2016

Fee Setting Authority to be Exercised for FY 2017 (Oct. 2016) In advance of the November 19, 2015 Patent Public Advisory Committee (PPAC) meeting, the USPTO has distributed its first fee change plan. As a reminder, the agency was given fee setting authority under the America Invents Act, this is the...