Update on the Central Reexamination Unit

The Central Reexamination Unit (CRU) at the USPTO handles a number of post grant proceedings by examiners selected for expert technical and advanced patent legal knowledge. Ex parte reexamination remains a comparatively low cost proceeding to challenge the validity of a patent. The CRU has recently taken on reissue applications and supplemental examination. At a recent Quarterly Meeting of the Patent Public Advisory Committee (PPAC) held on May 5, 2016, John Cottingham, the Director of the CRU, provided an More

A Voice at the Table: The New Pre-Appeal Pilot

iStock_90868745_SMALLHave you ever tried a Pre-Appeal Brief Request for Review?  Ever wish you could sit in on the Examiner’s conference?  Well now you can, under a new pilot program launched today, July 11, 2016.  It’s called P3 (“Post-Prosecution Pilot Program”) and combines some aspects of after-final practice with an expanded role for the applicant in a pre-appeal review.

Program details are laid out in a Federal Register notice (81 FR 44845, Jul. 11, 2016, pdf copy) and at the More

Brexit: Potential Consequences for European Patents

On June 23, 2016, the citizens of the United Kingdom voted in favor of leaving the European Union. This is a monumental step which historians will analyze in order to understand why and how it became possible. In the meantime, lawyers will have to figure out the consequences, including how to untangle this 60 year-old relationship.

European patents should not be affected by Brexit because the European Patent Convention is not a European Union instrument. It currently has 38 Contracting States and some… More

Petitioners Should Prefer to Lose Early

Rather than resist preliminary-stage discovery, Petitioners instead should say “Bring it on!” As I suggested in an earlier post, Patent Owners’ ability to introduce new declaration evidence with a preliminary response is unlikely to help them avoid trial. I doubt the Board will deny a Petitioner the relief requested on the untested evidence of a Patent Owner witness, however persuasive that evidence may appear. The new PTAB rules bear me out by making clear that factual disputes at institution will be resolved… More

Inadmissible Doesn’t Mean Confidential at the PTAB

Although the focus of IPR and other PTAB trials is on the validity of patents, parties cannot reflexively rely on the safeguards of FRE 408 for licensing and settlement negotiations that apply in Federal Court. In Palo Alto Networks, Inc. v. FinJan, Inc., (Cases IPR2016-00149 and IPR2016-00150, Paper 12), the Board denied a motion to seal, stressing that “[t]here is a presumption that the record of our proceedings, including documents submitted as exhibits, shall be made available to the public [under 37… More

PTAB Bench & Bar Conference: June 15, 2016

AIPLA-USPTOThe PTABloggers are pleased to join the USPTO and the AIPLA in inviting you to attend the PTAB’s second annual Bench and Bar Conference (flyer).  It is set for Wednesday, June 15th 2016 at the USPTO Headquarters in Alexandria from 1 to 5 pm, followed by a reception.  Attendees should register in advance with the AIPLA.

The agenda this year splits time between AIA trials and ex parte appeals. For the former topic, one highlight is a panel discussion with Judge… More

ITC, District Court, PTAB (Oh, My): Managing Triple-Header Patent Litigation

A district court litigation has lots of moving parts all by itself. But add in an IPR and then an ITC Section 337 investigation, and it may become more than the parties can handle. But will the parties agree to stay any of the proceedings? And even if they agree, would any of the tribunals oblige?

The answer, it seems, is that when the parties don’t agree, the tribunals can wind up gridlocked and nothing gets stayed. Energetiq Technology, Inc. v. ASML Netherlands… More

CAFC Declines to Change Venue Standard

Declined Rubber StampThe Federal Circuit panel today rejected TC Heartland’s Petition for Mandamus to direct the United States District Court for the District of Delaware to either dismiss or transfer the patent infringement suit filed against it by Kraft. Heartland had argued that the 2011 amendments to the venue statute have changed the patent venue standard to permitting venue only where a defendant resides or where the defendant allegedly infringes the patent and has a place of business. In… More

It Stays Secret Only if it Doesn’t Matter: Confidentiality at the PTAB

The PTAB has rules for sealing evidence, but they are different from those in district court, like much else at the PTAB. Both parties in Google Inc. v. Summit 6 LLC, IPR2015-00806, got tripped up by them.

In district court, information designated by a party as confidential is treated as such by court until that designation is challenged by the opponent and ruled on by the judge.  In the PTAB, information is not treated as confidential until a motion requesting… More

The New PTAB Trial Rules are Here

Just announced today — the amended PTAB Rules of trial practice (click for a copy) will be published in the Federal Register on April 1, 2016 and take effect at the end of the month.

Changes include

new testimonial evidence permitted in preliminary response Rule-11 type certification required Phillips-style claim construction for expiring patents word-count instead of page limit on major briefing

From the summary: “This final rule amends the existing consolidated set of rules relating to the… More