PTAB Judges Weigh in on Best Practices for Ex parte Appeals

The PTAB Bar Association’s Annual Conference in March included a panel of Administrative Patent Judges who offered commentary on best practices in ex parte appeals from original examination and reexaminations. The participating APJs were Lead Administrative Patent Judge Rae Lynn Guest and Administrative Patent Judge James T. Moore. Continue Reading

Is that Prior Art?

The nature of any inter partes dispute apparently is to engage in even a seemingly mundane dispute. After all, that’s the dispute that may lead you to success, right? Perhaps then there is nothing surprising in an April 3, 2019, Patent Trial and Appeal Board order concerned about whether a book qualifies as prior art. That order, issued by the Board’s new “Precedential Opinion Panel,” grants an aggrieved petitioner’s request for rehearing of an earlier Board decision refusing to institute inter partes review because the petitioner apparently did not establish a book bearing a 1990 (or 1991) copyright date was publicly available before the 1995 date on which the application for the subject patent was filed. Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039 (Apr. 1, 2019) (order). Continue Reading

PTAB Must Consider All Grounds Raised in an Instituted Petition

In AC Technologies S.A. v. Amazon.com, the Federal Circuit confirmed the PTO’s interpretation of SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018) (discussed in greater detail here) requiring that the PTAB address each ground of invalidity raised in an instituted petition in its final written decision. 912 F.3d 1358 (Fed. Cir. 2019). Continue Reading

Have You Included Specific Reference to Every Document in Your Priority Claim?

Incorporation by reference is not sufficient to satisfy specific reference to each prior-filed patent application to be entitled to an earlier priority date (Droplets, Inc. v. E*Trade Bank (887 F.3d 1309 (2018)). This appeal to the Federal Circuit stems from a dispute between Droplets, Inc. and E*TRADE Bank, over a patent (U.S. Patent No. 8,402,115 (“the ’115 Patent”)) owned by Droplets. At issue is the effective filing date of Droplets’ ‘115 patent. Continue Reading

Patent Office Announces New Amendments Procedure for AIA Trials

For AIA trials instituted on or after March 15, 2019, the patent owner may opt-in to a pilot program the Patent Office implemented for motion to amend (“MTA”) practice and procedures in the PTAB’s administration of these trials. Today’s Federal Register (link) includes the Patent Office’s explanation of the program, which it proposed in October 2018. The Office’s explanation also includes its reply to comments the public offered in response to the proposal. Generally, the comments supported the proposed program, but expressed concerns over the tight timelines proposed. The implemented program appears to address those concerns. Continue Reading

Newly Appointed Chief Judge Scott Boalick Addresses PTAB Bar Association

Addressing the PTAB Bar Association Conference in its opening session, newly appointed Chief Judge Scott Boalick explained that his goal as Chief Judge is to bring stability to the board and increase predictability. He wants all parties coming to the Board to feel that they have gotten a fair shake and that the procedures are fair. Continue Reading

How the PTAB Reviews Software Inventions Under the 2019 Revised Subject Matter Eligibility Guidance

 

PTABWatch Takeaway: The United States Patent and Trademark Office (USPTO)’s 2019 Revised Patent Subject Matter Eligibility Guidance provides a useful, and effective, tool for demonstrating patent eligibility of software-related inventions. While the 2019 Guidance acts as persuasive authority only, the PTAB has relied on the 2019 Guidance as a rubric in numerous cases to analyze, and find patent eligible, software-related inventions. Practitioners and inventors seeking to overcome, or avoid, patent eligibility issues under Section 101 would do well to draft or amend claims in view of the 2019 Guidance. Continue Reading

Federal Circuit Invites Patent Office to Open Pandora’s Box

It is puzzling, if not troubling, that the Federal Circuit recently invited (link) the Patent Office to submit a brief expressing its views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2), a veritable Pandora’s Box. It is puzzling because only the judiciary can apply this estoppel provision, the Patent Office cannot. It is troubling not necessarily because the Patent Office unsurprisingly accepted the court’s invitation, but because it then answered in the affirmative a broad question the court did not pose: “whether section 315(e)(2) bars a successful inter partes review petitioner from making the same arguments in district court that it prevailed on in the inter partes review.” By inviting the court to conclude as much, the Patent Office has identified a statutory gaffe that may require parties to reevaluate the risks and rewards in pursuing inter partes review in parallel with district court actions. Continue Reading

“Hearsay & Authentication” From the PTAB Judges’ Perspective

The PTAB recently hosted a Boardside Chat webinar on the topic of hearsay and authentication before the Board. The Administrative Patent Judges that presented were Michael Zecher, Tom Giannetti and Grace Obermann. A PowerPoint of the presentation can be found here and the Boardside Chat schedule can be found here. Continue Reading

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