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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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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 most senior active-service judges said that the court’s remedy in Arthrex (i) wasn’t required by Supreme Court precedent, (ii) imposed unnecessary burdens on all involved in AIA trials, (iii) requires hundreds of new proceedings, and (iv) involves decision-making that is itself unconstitutional. And a day later, another panel of the court issued an order soliciting briefing on those and other issues left in Arthrex’s wake, tacitly questioning the Arthrex panel’s decision.Continue Reading Haste Makes Waste?

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 of APJs canceling claims in Arthrex’s patent in a recent inter partes review (IPR). But because that decision occurred while there was an Appointments Clause violation, the court vacated and remanded the IPR to be decided by a different panel of APJs.
Continue Reading Fixing an Appointments Clause Violation

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 the Patent Trial and Appeal Board to institute a post grant review proceeding. Shortly after institution, Honeywell sought the Board’s authorization to file a motion for leave to obtain from the Patent Office’s Director a certificate of correction. After all, the Director often issues certificates to correct priority claims. But the Board refused authorization and ultimately canceled the patent. On appeal, the Federal Circuit vacated the Board’s decision, chastising the Board for abusing its discretion. Honeywell Int’l Inc. v. Arkema Inc., Appeals 2018-1151, ‑1153 (Fed. Cir. Oct. 1, 2019).Continue Reading The Chaos of Too Many Rules

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 30, 2019). As we previously discussed (link), the Supreme Court’s decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1379 (2018), left open this issue. The Board’s decisions on appeal pre-date Oil States and unsurprisingly, perhaps, Celgene did not therefore raise the issue before the Board. But Celgene and the Patent Office briefed this constitutional issue in the appeal and then addressed it at oral argument to the Federal Circuit’s satisfaction. In further view of the growing number of appeals raising this issue in the wake of Oil States, the court exercised its discretion to decide the issue.
Continue Reading Federal Circuit Addresses Constitutional Issue Supreme Court Left Open

In re Global IP Holdings LLC, Appeal 2018-1426 (Fed. Cir. July 5,2019), concerns patent law’s written description requirement, under 35 USC § 112. The patentee is trying to reissue its patent on a carpeted load floor of a car. The patented floor includes thermoplastic components. The components, according to the patentee, ought not have been limited to thermoplastics, rather each should have been any plastic. So, the patentee sought to reissue the patent with a claim to the broader invention. The Patent Office examiner rejected the revised claim.
Continue Reading Is the Written Description Requirement a Nose of Wax?

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 court’s invitation, the Patent Office said that a court may apply this statutory estoppel not only to petitioners who lose an IPR, but also to those who prevail. The Office conceded that estopping prevailing IPR petitioners “leads to the counterintuitive result that a district court would not be able to consider invalidity arguments that the Board found persuasive.” But the Office said that this will have no practical effect in most cases.
Continue Reading Estoppel Remains Malleable

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 Is that Prior Art?

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 Patent Office Announces New Amendments Procedure for AIA Trials

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 Federal Circuit Invites Patent Office to Open Pandora’s Box

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, upon the brink of which the Federal Circuit now stands. This stems from Oil States’ failure to explicitly challenge in the broad question its certiorari petition presented the retroactive application of inter partes review to its patent—a patent that issued before the procedure existed.
Continue Reading Confusion and Delay

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.