Posts Tagged: "America Invents Act"

The U.S. Patent and Trademark Office (USPTO) today announced a Notice of Proposed Rulemaking (NPRM) that will be officially published in the Federal Register tomorrow and that addresses a subset of issues from the controversial April 2023 Advance Notice of Proposed Rulemaking (ANPRM). USPTO Director Kathi Vidal received criticism following the ANPRM, most notably from Congress. In a House IP Subcommittee meeting held last year, members of the Subcommittee expressed confusion about the ANPRM and suggested Vidal may have been exceeding her authority with some of the proposals.

The U.S. Patent and Trademark Office (USPTO) announced today that it will be publishing a Notice of Proposed Rulemaking (NPRM) tomorrow aimed at formalizing the rules governing Director Review of Patent Trial and Appeal Board (PTAB) decisions under the America Invents Act (AIA). In July 2021, the USPTO announced that it would be implementing an interim rule at the agency in response to the U.S. Supreme Court’s late June 2021 decision in Arthrex v. Smith & Nephew. In the Arthrex ruling, the Court found that the constitutional Appointments Clause violation created by the process for appointing administrative patent judges (APJs) to the PTAB was best cured by review of APJ decisions by the USPTO Director. The interim rule began the process of determining how that review process would play out during the day-to-day operations of the PTAB.

It was a below-average week in both the Patent Trial and Appeal Board (PTAB) and in district courts this week for new patent filings, with only 27—all inter partes review (IPR)—at the PTAB and 47 new filings in district court…. The PTAB issued institution  decisions in 16 proceedings this week, denying institution in two IPRs (both on the merits) and ordering institution in 12 IPRs and two post-grant reviews (PGR). Instituted proceedings include two IPRs filed by Palo Alto Networks and Keysight Technologies challenging one Centripetal Networks patent; two IPRs filed by Samsung Electronics Co., challenging two Headwater Research Patents; and two IPRs filed by Motorola Solutions Inc., challenging two Sta Group LLC patents.

The U.S. Patent and Trademark Office (USPTO) today published a Federal Register Notice (FRN) announcing a notice of proposed rulemaking (NPRM) that would make permanent certain aspects of the Motion to Amend (MTA) Pilot program and revise rules around the burden of persuasion governing MTAs. The MTA pilot program for America Invents Act (AIA) proceedings at the Patent Trial and Appeal Board (PTAB) stems back to March 2019, when the Office published a notice of pilot program in the Federal Register announcing that patent owners would have the opportunity to seek preliminary guidance on MTAs from the Board itself. The pilot program also offered the opportunity for patent owners to file revised MTAs following a petitioner’s brief in opposition to the original motion to amend. Since launching the pilot program, the USPTO has twice extended the date for terminating the program, which is currently set to run through September 16, 2024.

The U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) today that would allow practitioners who are not registered with the USPTO patent bar to act as lead counsel in proceedings before the Patent Trial and Appeal Board (PTAB). The Office has decided to propose that practitioners must still be represented by a registered practitioner, but to allow parties to “designate a non-registered practitioner as lead counsel and the registered practitioner as back-up counsel.”

Section 311(b) of the America Invents Act (AIA) provides that a patent can be challenged in an inter partes review (IPR) “only on the basis of prior art consisting of patents or printed publications.” A published U.S. patent application that never issued as a patent can be used as the basis for an IPR challenge because it’s printed and it’s a publication, right? Not so fast.

On December 6, the U.S. Patent and Trademark Office (USPTO) announced the new membership of its public advisory boards providing oversight of the patent and trademark operations of the agency. The announcement comes about a week after the USPTO’s Patent Public Advisory Committee (PPAC) publicly released its most recent annual report summarizing the agency’s patent operations with recommendations to end user fee diversion and publicize data from America Invents Act (AIA) trials at the Patent Trial and Appeal Board (PTAB).

In March 2023, the Patent Trial and Appeal Board (Board) addressed in Penumbra, Inc. v. Rapidpulse, Inc.,  IPR2021-01466, Paper 34 (Mar. 10, 2023), a key issue in inter partes reviews: how to establish a reference patent as prior art based on the filing date of an earlier-filed application, such as a provisional. The Board held that the requirements of the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), do not apply for post-America Invents Act (AIA) patents. Penumbra, IPR2021-01466, Paper 34 at 29-35. On November 15, 2023, U.S Patent and Trademark Office (USPTO) Director Kathi Vidal designated the Penumbra decision precedential. This article explores the evolution of the law on this issue.

An event held Monday by the Center for Strategic & International Studies (CSIS), and moderated by former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, featured a number of high-profile political and professional figures in the intellectual property space debating approaches to strengthening the U.S. patent system, with an emphasis on national security. Representative Deborah Ross (D-NC), who serves on the U.S. House of Representatives’ Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet, first joined Iancu to discuss her reasons for supporting the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act.

Here we go again! We’ve heard the story in the past, which is sadly all too common. A patent owner prevails in federal district court, and also prevails at the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) challenge, but somehow finds themselves still fighting an ex parte reexamination. How is this possible? Perhaps something will be done—this time—because the abusive, harassing challenger is Chinese company TikTok, who is seeking to invalidate the very same claims it failed to invalidate in an IPR that was denied institution on the merits.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision today that the Patent Trial and Appeal Board (PTAB) does not lose its statutory authority to issue a Final Written Decision when it misses the 1.5-year deadline to do so, as established by the patent statute. According to the opinion, which was authored by Judge Dyk, “[t]his appears to be the only proceeding in which the Board has failed to meet the statutory deadline, and this is accordingly a matter of first impression.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today affirming the Patent Trial and Appeal Board’s (PTAB’s) finding that Medtronic failed to prove the challenged claims of Teleflex’s catheter patent unpatentable. In several previous precedential decisions issued this year, the CAFC similarly upheld the PTAB’s determinations. In May, the court said that Medtronic failed to show the challenged claims of five catheter patents unpatentable because the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented. And in June, the court found in two separate rulings issued the same day that Teleflex’s objective evidence supported a presumption of nexus, that Medtronic copied Teleflex’s product and that Teleflex’s substitute claims did not lack adequate written description.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today designated as precedential a Patent Trial and Appeal Board (PTAB) decision from March of this year that held a precedential U.S. Court of Appeals for the Federal Circuit (CAFC) ruling on prior art determinations for provisional applications applies only to pre-America Invents Act (AIA) patents.

The U.S. Patent and Trademark Office (USPTO) responded last week to a petition for certiorari that is asking the Supreme Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that said appellate review of whether the Patent Trial and Appeal Board’s (PTAB’s) discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” is precluded by Section 314(d) of the patent statute.