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Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

Back in 1988, the Federal Circuit reversed a district court decision that refused to award a party its reasonable attorney’s fees incurred in successfully litigating a patent’s validity before the Patent Office. PPG Indus., Inc. v. Celanese Polymer Specialties Co., 840 F.2d 1565 (Fed. Cir. 1988). The Office determined that the patent asserted in litigation—stayed … Continue Reading

Fast-Track Decisions on Ex Parte Appeals

On July 2, 2020, the Patent Office initiated the “Fast-Track Appeals Pilot Program,” which it designed to reduce the pendency of ex parte appeals. The program, effective for one year, is in a pilot stage to gauge the public’s interest and to assess its longer-term feasibility. The Office neither expects nor intends any delays for … Continue Reading

The Arthrex Mulligan

The Federal Circuit, in Arthrex, concluded that the Patent and Trial Appeal Board’s Administrative Patent Judges were unconstitutionally appointed “principal” officers. The court therefore vacated the Board’s decision that canceled claims in an inter partes review and remanded so a new panel of APJs would re-decide the patentability of the claims. What happens, however, when … Continue Reading

The Long Run

Adidas successfully petitioned the Patent Trial and Appeal Board in 2012 to review a Nike shoe patent. During that review, Nike filed a motion to amend the patent by canceling all claims and substituting four new claims. The Board canceled the patent claims and found the new claims unpatentable. Among other things, the Board said … Continue Reading

A Fine Mess

Update (Apr. 3, 2020): The Federal Circuit recently denied rehearing petitions in the Polaris appeals referenced below (see link and link), and also denied the PTO’s request to stay the mandate in the Arthrex appeal (see link). The Federal Circuit recently issued an order denying multiple rehearing petitions in Arthrex Inc. v. Smith & Nephew, … Continue Reading

Come on, Board, Finish What You Started

The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., Appeals 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020), is remarkable, but not for its holding: “the Board may not cancel claims for indefiniteness in an IPR proceeding.” After 10,000 IPRs, hardly anyone thought otherwise. But it’s interesting nonetheless that someone so … Continue Reading

POP Hits a Softball

On Winter’s eve, the Board’s Precedential Opinion Panel (POP) finally answered a question it posed in an April order: “What is required for a petitioner to establish that an asserted reference qualifies as [a] ‘printed publication’ at the institution stage?” As we earlier noted, the April order granted an aggrieved petitioner’s request for rehearing of … Continue Reading

Haste Makes Waste?

If the Federal Circuit’s decision in Arthrex wasn’t sufficiently newsworthy, then look at what lurks in its wake. The day after the decision, the court issued precedential orders indicating that a timely Constitutional challenge apparently must be presented to the court in an opening brief. A few days after those orders, two of the court’s … Continue Reading

Fixing an Appointments Clause Violation

In Arthrex Inc. v. Smith & Nephew, Inc., Appeal 2018-2140 (Fed. Cir. Oct. 31, 2019), the Federal Circuit concluded that the PTAB’s Administrative Patent Judges (APJs) are “principal” officers and their appointment by the Secretary of Commerce therefore violates the Constitution’s Appointments Clause. The issue arose in an appeal of a decision by a panel … Continue Reading

The Chaos of Too Many Rules

The Patent Office issued Honeywell a patent that required correction. The patent, according to Honeywell, did not include the proper claim for the benefit of priority to the filing date of an application that Honeywell had earlier filed. But before Honeywell noticed the error and tried to correct that priority claim, its competitor, Arkema, petitioned … Continue Reading

Federal Circuit Addresses Constitutional Issue Supreme Court Left Open

In consolidated appeals of a trio of Board decisions canceling pre-AIA patents in inter partes reviews (IPR), the Federal Circuit held “that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” Celgene Corp. v. Peter, Appeals 2018-1167, -1168, -1169, Slip Op. at 3 (Fed. Cir. July … Continue Reading

Estoppel Remains Malleable

A few months ago, in BTG International Ltd. v. Amneal Pharmaceuticals LLC, the Federal Circuit invited the Patent Office’s views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2). We noted then that this is an estoppel a district court may apply, but the Patent Office may not. In response to the … 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 … 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. … Continue Reading

Confusion and Delay

In Oil States Energy Services., LLC v. Greene’s Energy Group, LLC, Justice Thomas, writing for a 7-2 majority of the Supreme Court, explained that inter partes review proceedings do not violate Article III or the Seventh Amendment of the Constitution. 138 S. Ct. 1365 (2018). But his opinion for the majority invited confusion and delay, … Continue Reading

No Mandamus Relief from Shenanigan-less Non-institution Decision

Absent extraordinary circumstances, the Federal Circuit will not review Patent Trial and Appeal Board decisions refusing to institute inter partes review. The statute and a 2016 Supreme Court decision prohibit such review. 35 U.S.C. § 314(d); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140–42 (2016) (clarifying, however, that appellate review is appropriate … Continue Reading

Trial Practice Guide Updates and Future Fee Increases

Today’s Federal Register includes a notice that the Patent Office updated its August 2012 Trial Practice Guide. The Federal Circuit recently noted that the Practice Guide “is a thoughtful and useful resource to which individual Board members and the public might turn for guidance,” but “is not binding on Board panel members.” Application in Internet … Continue Reading

Federal Circuit Admonishes PTAB for Taking Short-cuts

In Application in Internet Time v. RPX Corp., Nos. 2017-1698, -1699, -1701 (Fed. Cir. July 9, 2018), the Federal Circuit decided that the Patent Trial and Appeal Board “applied an unduly restrictive test for determining whether a person or entity is a ‘real party in interest’ within the meaning of [35 USC] § 315(b) and … Continue Reading

No SAS-based Relief on Appeal, Unless Requested

Left in the wake of the Supreme Court’s SAS decision (discussed here) are a number of appeals pending before the Federal Circuit concerning Patent Trial and Appeal Board final written decisions in inter partes review (IPR) proceedings administered on a subset of claims and grounds presented in the IPR petition. While litigants before the Board … Continue Reading

Patent Office Proposes to Jettison BRI in AIA Trials

The Patent Office today issued a press release of its notice of proposed rulemaking that would replace the broadest reasonable interpretation standard the Patent Trial and Appeal Board applies to construe unexpired patent claims and proposed substitute (amended) claims in AIA trial proceedings with the Phillips standard applied in patent cases before federal district courts … Continue Reading

Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal Circuit’s … Continue Reading
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