The Federal Circuit recently clarified in LifeNet Health v. LifeCell Corporation, No. 2015-1549 (Fed. Cir. Sept. 16, 2016) that a negative functional claim limitation can be used to describe a capability or structural element of an apparatus. The Court affirmed a judgment of direct infringement against a manufacturer where the limitation was found to be satisfied from the moment the apparatus was manufactured,… More
Category Archives: General
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,… More
A Voice at the Table: The New Pre-Appeal Pilot
Have 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,… 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.… More
PTAB Bench & Bar Conference: June 15, 2016
The 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.… More
CAFC Declines to Change Venue Standard
The 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.… 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.
- 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 United States Patent and Trademark Office (Office or USPTO) trial practice for IPR,… More
One Patent Law, Two Economic Sectors
Claire Laporte has written a thoughtful article on whether a single patent system can satisfy the competing and perhaps inconsistent demands of life science and high-tech innovation. Of particular interest to this blog is her discussion of the PTAB and whether it has fulfilled its intended purpose of curbing abusive litigation. Read the full article at the Health Affairs Blog, which also links to Claire’s video presentation of this topic.… More
CAFC Debates a Change in the Venue Standard
AIA trial proceedings, such as IPR’s, provide alternatives to traditional patent litigation, as Scott Kamholz and I discussed in our article “Good, Fast, Cheap Certainty: The Case for Patent Office Litigation,” (recently published in The New York Law Journal). When considering an IPR and/or traditional litigation, factors such as cost, speed and convenience must be considered. On March 11, 2016, the Federal Circuit took up the venue standard in patent litigation —… More
The PTAB Is Still in Business
The Federal Circuit just announced in MCM Portfolio LLC v. Hewlett Packard, No. 2015-1091, that the IPR process is not unconstitutional. Appellants argued that IPRs should be held by an Article III court, and the court rejected this argument. The court noted that Supreme Court precedent generally allows Congress to devise expert and inexpensive ways through administrative adjudication to deal with a class of questions of fact. … More
Happy Thanksgiving From the PTABloggers
We at Foley Hoag wish you a very happy Thanksgiving. And while you are gorging on turkey, cranberries and football, we remind you that patents still lurk on Thanksgiving Day! As a public service, you may wish to use (license?) this apparatus (U.S. Patent No. 9,016,190) to avoid any frying turkey explosions.
You may also wish to feast on a sweet potato named “Evangeline” (U.S.… More
Former Chief Judge James D. Smith, now Chief IP Counsel at Ecolab
It was my honor to serve with Former Chief Administrative Patent Judge James Donald Smith at the PTAB. Please please join me in congratulating him on his appointment as Chief Intellectual Property Counsel at Ecolab. More
When Joint Settlement Agreements Do Not Settle
The Patent Trial and Appeal Board’s Discretion To Maintain A Proceeding After Petitioner Termination
Under 37 CFR 42.74, parties to a trial before the Patent Trial and Appeal Board (PTAB) may mutually agree to terminate the proceeding. However, the PTAB is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Patent Office practice irrespective of the parties’ agreement to terminate.… More
A (Former) Judge’s Perspectives
Foley Hoag‘s PTAB Practice Group is delighted to launch this blog dedicated to all aspects of practice before the Patent Trial and Appeal Board. In this blog, we plan to offer commentary to augment the reader’s general understanding of proceedings before the PTAB, and to provide insight into important issues in PTAB practice. Although we expect that most of our comments will arise in the context of inter partes review,… More