Tag Archives: Legislation

Proposed Hatch-Waxman Amendment Would Effectively Eliminate IPR Challenges by Generics

By Chelsea M. Murray on Posted in Amendments, Inter Partes Review, Legislation
On June 13, 2018, Senator Orrin Hatch (R-UT) introduced to the Senate Judiciary Committee an amendment to restore the careful balance sought in the Hatch-Waxman Act, which provided incentives for both pharmaceutical innovation and drug affordability. The amendment, titled the Hatch-Waxman Integrity Act of 2018, would modify the IPR process for pharmaceuticals—under Hatch-Waxman and the … Continue Reading

Patent Agent Privilege Recognized in Final Rulemaking Issued by USPTO

By Jennifer Burnette on Posted in Discovery, Inter Partes Review, IPR, Post Grant Review
On November 7, 2017, the USPTO issued a Final Rule recognizing that communications between U.S. and foreign patent practitioners and their clients that are reasonably necessary and incident to the scope of the patent practitioners’ authority shall receive the same protections of privilege under Federal Law as if the communication were between a client and … Continue Reading

Interim Director Matal Expresses High Confidence in Constitutionality of AIA Trials

By Sandip H. Patel on Posted in Appeals, Inter Partes Review, IPR, Legislation
An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional Joe Matal, interim director of the Patent Office, addressed the IPO’s 45th Annual Meeting on September 19, 2017, in San Francisco. He said that the Office, and particularly the PTAB, experienced a productive yet tumultuous five years since the … Continue Reading

How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, IPR, Section 112
PTABWatch Takeaway: Claims that recite the term “means” may trigger the means-plus-function presumption under pre-AIA 35 U.S.C. § 112 ¶ 6 (Section 112(f) of the AIA), but the presumption can be overcome where: (1) the means term itself recites structure; (2) that structure is “common parlance” to those of ordinary skill in the art; and … Continue Reading

Adding Two More to the List of Serious Questions about AIA Trials

By Sandip H. Patel on Posted in Appeals, Institution / Denial, Joinder, Trial Procedures
In a routine AIA trial, the PTAB determined that challenged claims in a patent directed to HVAC systems were unpatentable as being obvious and anticipated by prior art. This trial was unusual, however, because the Board premised its anticipation conclusion on a joined IPR petition that successfully rectified evidentiary deficiencies in the same petitioner’s earlier … Continue Reading

Supreme Court to Decide Whether PTAB May Institute/Decide AIA Trials on Fewer than All Challenged Claims

By Sandip H. Patel on Posted in Legislation, Trial Procedures
An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims The Supreme Court issued an order on May 22, 2017, granting SAS Institute’s petition for a writ of certiorari to review the Federal Circuit’s judgment in SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 … Continue Reading

One Fish, Two Fish, Red Fish, Enfish: Unraveling the Maze of Parallel Court/PTAB Proceedings

By Thomas L. Duston on Posted in Discovery, Inter Partes Review, IPR, Trial Procedures
The saga of Enfish v. Microsoft continues.  The Enfish litigation provides a textbook example of the multi-pronged defense now common with the advent of post-grant review and the evolving law concerning unpatentable subject matter.  Many are no doubt aware of the significant Federal Circuit decision on patentable subject matter (i.e. Section 101) which this litigation … Continue Reading

Federal Circuit to take AIA Time Bar issue En Banc

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, Legislation, Trial Procedures
An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) … Continue Reading

Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, IPR, Legislation, Trial Procedures
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

By Sandip H. Patel on Posted in Discovery, Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

PTAB Extends a Helping Hand to Petitioner: Advising Petitioner to File Supplemental Evidence Rather Than Supplemental Information

By Thomas L. Duston on Posted in Discovery, Inter Partes Review, IPR, Trial Procedures
In a bit of “inside baseball,” the PTAB recently clarified the difference between supplemental evidence and supplemental information.  Practitioners would do well to give careful attention to this distinction.  The difference can have profound consequences to an IPR Petitioner. In Generico LLC v. Dr. Falk Pharma GmbH, IPR2016-00297, Paper No. 15 (July 15, 2016), the … Continue Reading

Supreme Court Vacates Federal Circuit Decision that Refused to Review PTAB’s Application of the Time Bar to AIA Trials

By Sandip H. Patel on Posted in Institution / Denial, Inter Partes Review, Legislation
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision

By Heather R. Kissling on Posted in Institution / Denial, Inter Partes Review, Legislation
The AIA explicitly bestows the USPTO Director with the authority to institute IPRs and the PTAB with the authority to decide the ultimate question of patent validity.  The Director delegated the authority to institute IPRs to the Board, but is it proper to assign the decision to the same APJs that render a final decision?  … Continue Reading

PTAB Refuses to Terminate AIA Trial Despite Applying the Estoppel Provision to Dismiss the Petitioner

By Sandip H. Patel on Posted in Covered Business Method, Estoppel, Legislation, Section 101, Trial Procedures
The PTAB recently issued an order applying the estoppel provision of the AIA (35 U.S.C. § 325(e)(1)) to dismiss a petitioner from covered business method (CBM) patent review proceedings a few days before a consolidated final hearing. Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015) (common order involving CBM2015-00016 and CBM2015-00018). … Continue Reading

A 200% Increase in Appeals of Patent Office Decisions to the Federal Circuit

By Sandip H. Patel on Posted in Appeals, Covered Business Method, Inter Partes Review, Legislation
In August of 2012, the Federal Register published the Patent Office’s estimate of the number of AIA trial petitions the Office then expected to receive in each of the three succeeding fiscal years (each such year ends September 30). In October of 2015, the Patent Office published a report of the number of trial petitions … Continue Reading

How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings

By Thomas L. Duston on Posted in Amendments, Claim Construction, Institution / Denial, Legislation, Sections 102/103
Recently, in the pages of this blog, we reported on the dire predictions made at the IPO Annual Meeting here in Chicago of the “end of days” for patents.  The purported culprits?  The PTAB and the America Invents Act’s newly enacted Inter Partes Review and Covered Business Method Review.  “Well, allow me to retort,” to … Continue Reading

Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend

By Sandip H. Patel on Posted in Claim Construction, Inter Partes Review, Legislation
Update: Overruled in part byAqua Products, Inc. v. Matal. Earlier this week, we wrote about the post-hearing briefing the Federal Circuit invited in Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015), and the questions it posed regarding the PTAB’s administration of inter partes review. The court issued … Continue Reading

Hatch-Waxman and BPCIA Patents May Be Exempted from Post-Grant Proceedings Under Pending Senate Legislation

thumbnail image of DNA strandBy John R. Labbé on Posted in Biotechnology, Legislation
On Thursday, June 4, the Senate Judiciary Committee approved the Protecting American Talent and Entrepreneurship (PATENT) Act. We previously reported the significant provisions of the bill. Several members of the Judiciary Committee expressed support for a further proposal that would exempt from PTO post-grant proceedings patents that are subject to the Hatch-Waxman or Biologics Price … Continue Reading

PTAB Review Reform in Bill Approved by Senate Committee

By Marshall Gerstein on Posted in Estoppel, Inter Partes Review, Legislation, Post Grant Review
Late June 2, the Senate Judiciary Committee released a new version of its Protecting American Talent and Entrepreneurship (PATENT) Act, S. 1137.  In response to prodding by industry groups, the bill now includes reforms directed at preventing abuse of the Patent Office’s post-grant proceedings, IPRs and PGRs, against patent owners The bill is here.… Continue Reading
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