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Sandip H. Patel

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Sandip H. Patel has more than 20 years of experience in representing clients in inter partes matters before the Patent Office, including interferences, reexaminations, and AIA trials. He has a formal education in chemical engineering, but his work in these matters has spanned the entire spectrum of engineering and sciences, including biotechnology, chemistry/chemical engineering, mechanical engineering, and electrical engineering. Read full bio here.

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The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions

On June 21, 2021, the Supreme Court issued a decision vacating the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). As we previously explained, the Federal Circuit in Arthrex held that the AIA was unconstitutional in that administrative patent judges (APJs) have the authority of principal officers, but the statute provides for their appointment by the Secretary of Commerce, rather than by the President with the advice and consent of the Senate.
Continue Reading The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions

The Patent Trial and Appeal Board recently presented an update on the “Fast-Track Appeals Pilot Program” the Patent Office initiated in July 2020. As we previously explained (link), the program is designed to reduce the pendency of ex parte appeals. Under the program, the Board has been issuing decisions within six months from the date the appeal enters the program. That’s a significant reduction in pendency. In its update, the Board presented details of the program’s progress.
Continue Reading The Board Is Deciding Ex Parte Appeals Within One Year

A couple of years ago, in Amerigen Pharmaceuticals Ltd. v. UCB Pharma GmbH, 913 F.3d 1076, 1082 (Fed. Cir. 2019), the Federal Circuit acknowledged its jurisdiction to decide appeals of the Board’s final written decisions in AIA trials, but explained that an appellant (AIA Trial petitioner) must demonstrate it has standing. Quoting from the Supreme Court’s decision in Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547 (2016), the court explained the appellant must demonstrate, among other things, that it has “suffered an injury in fact.” Amerigen, 913 F.3d at 1082–83.
Continue Reading The Concrete Injury Necessary for Appellate Standing Is Flexible

A patent interference is an adversarial proceeding where each party is trying deprive its opponent of a patent on an invention that that the Patent Office has already decided is patentable. Long after the AIA became effective to phase out interferences, the Patent Trial and Appeal Board continues to declare and administer them where at least one of the parties has an interfering application or patent predating the AIA’s enactment. The Board declares interferences to avoid the embarrassment and marketplace chaos where the Patent Office issues two patents on the same invention to different parties, and to avoid awarding a patent monopoly to the entity who was not the first to invent.
Continue Reading Mine Your Patent Application and You Might Find a Licensee

The Supreme Court issued an order on October 13, 2020, granting and consolidating three certiorari petitions seeking review of the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (Fed. Cir. 2020). We discussed the Federal Circuit’s judgment here and its decision denying rehearing here. The Supreme Court, at the government’s recommendation, asks the parties to address the following two questions.
Continue Reading Supreme Court to Review the Arthrex Decision

A decision to stay patent infringement litigation falls within a federal court’s power to control its docket. But in determining whether to stay litigation pending the Patent Office’s inter partes review (IPR) of the patent, courts still are guided by three factors: (1) whether the stay will simplify the litigation, (2) whether a stay would unduly prejudice (or present a clear tactical disadvantage to) the patent owner, and (3) whether the litigation has progressed to some advanced stage (e.g., discovery is complete, a trial date is set, etc.). Yet since the Supreme Court’s 2018 decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (discussed here), courts in the Eastern District of Texas have erected an unnecessarily high bar for stay-movants to leap.
Continue Reading Denying a Stay and Building an Airplane While Flying It

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 pending the Office’s review—was invalid and obtained through inequitable conduct. Nobody contested the district court’s conclusion that the case was exceptional.
Continue Reading Does Section 285 Permit an Award of Attorney’s Fees for Patent Office Proceedings?

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 appeals that forego the pilot program. So, for now, participation in the program is first come, first served, limited to 500 applications, and requires submission of a short petition and payment of a modest fee. The program is likely welcome news, especially to those who have complained about the lengthy pendency often accompanying appeals.
Continue Reading Fast-Track Decisions on Ex Parte Appeals

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 the Board’s pre-Arthrex final written decision does not cancel—but rather upholds the patentability of—the challenged claims? Well, there’s an appeal for that.
Continue Reading The Arthrex Mulligan

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 that Nike—the patent owner—did not establish the new claims were patentable over the prior art.
Continue Reading The Long Run

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.