Posts Tagged: "Patent Trial and Appeal Board"

The United States Patent and Trademark Office (USPTO) today announced that it is retiring the Precedential Opinion Panel (POP) and extending the Director Review process to decisions on institution in America Invents Act (AIA) proceedings. The POP was established in 2018 under Director Andrei Iancu. Earlier this year, Vidal said that guidance on replacing the POP was one of the issues she expected to announce in the first part of her second year in office.

I was told that elected officials count on—in fact, they need—constituent input to be effective legislators. After my patents were unjustly cancelled at the Patent Trial and Appeal Board (PTAB), I started the journey to do this very thing. Since January of 2022, I have visited Congress and the Senate two dozen times. I have visited over 200 offices telling my story and advocating for the “little” inventors, like me.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential opinion holding that the reissue claims relating to a patent for a floating grill owned by Float‘N’Grill LLC (FNG) were not directed to the original invention and therefore were properly rejected by the U.S. Patent and Trademark Office (USPTO). U.S. Patent No. 9,771,132 is titled “Floating Apparatus for Supporting a Grill” and as issued in September, 2017. After issuance, FNG filed a reissue application for additional claims that were rejected by first the examiner and then the Patent Trial and Appeal Board (PTAB). The original claims required a “plurality of magnets” to which “a flattened bottom side of a portable outdoor grill is removably securable,” while the reissue claims “more generically call for the removable securing of a grill to the float apparatus,” according to the CAFC’s opinion.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision finding the Patent Trial and Appeal Board (PTAB) erred in too narrowly confining its motivation-to-combine inquiry and improperly limiting its definition of the relevant art to hold that Axonics, Inc. had failed to prove Medtronic, Inc.’s patent claims obvious. The patents at issue are Medtronic’s U.S. Patent Nos. 8,626,314 and 8,036,756. They cover “a neurostimulation lead and a method for implanting and anchoring the lead.”

In April, the United States Patent and Trademark Office (USPTO) requested public input on an Advance Notice of Proposed Rulemaking (ANPRM). The Request for Comments (RFC) allowed the public to voice their opinion on the proposed rules, including hundreds of real, authentic inventors. In the past, US Inventor has asked its members to use their voices and write comments for the USPTO’s requests. Typically, these requests generate at least 100 responses from USI’s members. This time, USI decided to level the playing field and give its members a chance to speak as loudly as its adversaries. We generated nearly 2,400 real comments from inventors, patent holders and concerned individuals. 

The United States Patent and Trademark Office (USPTO) has released an update to its study on multiple Patent Trial and Appeal Board (PTAB) petitions that it says demonstrates that serial and parallel petition practice at the PTAB has been decreasing since 2016, when the Office first issued guidance on the subject. Serial petitions are characterized as petitions filed to challenge the same patent more than 90 days after the initial petition, while parallel petitions are those filed 90 days or fewer apart. The report determined the total number of challenges in each fiscal year by looking at how many times a particular petitioner challenged claims of a particular patent.

The U.S. Court of Appeals for the Federal Circuit (CAFC) has granted a rare en banc review of its January, 2023, decision in LKQ Corporation v. GM Global Technology Operations, which affirmed a Patent Trial and Appeal Board (PTAB) ruling that LKQ failed to show by a preponderance of the evidence that GM’s design patent was anticipated or would have been obvious. U.S. Patent D855,508 covers a “vehicle front skid bar.” In its January decision, the Federal Circuit explained that “applying the tests established in Rosen and Durling, the Board found that LKQ failed to identify a sufficient primary reference, and therefore failed to prove obviousness by a preponderance of the evidence.

Less than one week after a bipartisan group of senators introduced the Promoting and Respecting Economically Vital American Innovation Leadership Act (PREVAIL) Act of 2023, the House yesterday introduced a companion bill. The bill is also sponsored on a bipartisan basis by Representatives Ken Buck (R-CO) and Deborah Ross (D-NC). Following the introduction of the PREVAIL Act by Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL) and Mazie Hirono (D-HI) last week, Jamie Simpson, who is the Council for Innovation Promotion’s (C4IP) Chief Policy Officer and Counsel and Former Chief Counsel for the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet, told IPWatchdog that it will be important to monitor whether the House introduces companion legislation in the coming weeks. She noted that “it’s really promising that the Chair and Ranking Member of the Senate IP Subcommittee are behind these bills. We’re getting closer to a chance of something happening.”

Yesterday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Medytox, Inc. v. Galderma S.A. affirming a final written decision by the Patent Trial and Appeal Board (PTAB) invalidating Medytox’s patent claims covering methods for treating patients with botulinum toxin and denying a revised motion to amend patent claims. On appeal, the Federal Circuit rebuffed several challenges, including an Administrative Procedures Act (APA) challenge to the PTAB’s motion to amend pilot program, holding that the PTAB’s change in claim construction was not arbitrary or capricious, nor did it prevent Medytox from litigating construction issues.

Last week was a big one for the potential future of the U.S. patent system. The deadline for comments on the U.S. Patent and Trademark Office’s (USPTO’s) Advance Notice of Proposed Rulemaking (ANPRM) on “Discretionary Institution Practices, Petition Word-Count Limits, and Settlement Practices for America Invents Act Trial Proceedings before the Patent Trial and Appeal Board [PTAB]” was Tuesday, June 20…. Then, on Thursday, Senators Thom Tillis (R-NC), Chris Coons (D-DE), with some help from their colleagues, introduced two new bills that would have major implications for patent eligibility law and PTAB practices, respectively. Below are some other perspectives from a range of IP stakeholders.

Last week, Senators Chris Coons (D-DE) and Thom Tillis (R-NC) launched the long-awaited legislative campaign to revive the faltering U.S. innovation system, jointly introducing one bill to restore patent eligibility and another to boost patent reliability at the Patent Trial and Appeal Board (PTAB).  As the chair and ranking member of the Senate subcommittee on Intellectual Property, they are well-positioned to move these bipartisan bills forward. They got assists from Senators Dick Durbin (D-IL) and Mazie Hirono (D-HI), who joined as original co-sponsors on the PREVAIL Act. While Coons and Tillis are well-placed, Durbin is even more so as he chairs the Judiciary Committee and serves as the number two leader of the majority party.

Public comments on the United States Patent and Trademark Office’s (USPTO) Advanced Notice of Proposed Rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices continued to be posted this week, following the June 20 deadline. The USPTO is currently processing the 14,000+ comments, many of which are duplicative, and periodically publishing them online. The Office announced the ANPRM in April. Broadly, the ANPRM is part of a strategy from the USPTO to restructure patent proceedings in an effort to curb abusive actions. A host of stakeholders, including IP law firms, academics, and advocacy groups, have weighed in on the various proposals in the rulemaking package, offering a mix of praise and criticism. We have covered several in two previous posts; here are some more.

On the same day the Patent Eligibility Restoration Act of 2023 was introduced by Senators Chris Coons (D-DE) and Thom Tillis (R-NC), the two senators, along with their colleagues, Dick Durbin (D-IL) and Mazie Hirono (D-HI), introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act today. The bill’s aim is to reform the Patent Trial and Appeal Board (PTAB) and would build upon Coons’ STRONGER Patents Act, introduced in 2019.

As of the morning of June 20, which was the deadline for public comment on the U.S. Patent and Trademark Office’s (USPTO’s) advanced notice of proposed rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices, the agency had received nearly 14,000 comments. On either side of the debate, the USPTO’s proposed “compelling merits” standard for circumventing Fintiv discretionary denials generated a great deal of feedback. The following comments from well-known thought leaders and companies encapsulate many of the issues that the USPTO must navigate as it contemplates changes to PTAB practices.

With the comment period set to close on June 20, more than 11,000 comments had been filed as of Friday, June 16, in response to the U.S. Patent and Trademark Office’s (USPTO’s) Advanced Notice of Proposed Rulemaking (ANPRM) on Patent Trial and Appeal Board (PTAB) practices. Only 265 of those had been posted as of Friday, however. The ANPRM was…