Posts Tagged: "post grant procedures"

This past week, IPWatchdog was made aware of a petition for post-grant review (PGR) proceedings at the Patent Trial and Appeal Board (PTAB) that raises interesting arguments about allegedly inconsistent statements on patentability made during legal proceedings by pharmaceutical firm, Gilead Sciences. Filed in early August, the PGR petition from Atea Pharmaceuticals cites 35 U.S.C. § 112 arguments previously raised by Gilead in other cases to challenge the validity of Gilead’s own patent claims that were allegedly obtained to block Atea’s competing hepatitis C virus (HCV) treatments.

A little over halfway through 2023, and nearing the end of the Patent Trial and Appeal Board’s (PTAB’s) fiscal year, we can take stock of an administrative body that is settling into a decade of precedent while big changes still loom. Unlike prior years, where policy changes resulted in statistical swings for institution rates, outcomes, amendment practice, and the like, this year has been more of an extension of previous trends (though institution rates are still creeping higher).

The U.S. Court of Appeals for the Federal Circuit (CAFC) held in a precedential decision today that an inter partes review (IPR) petitioner must be given the opportunity to present evidence of anticipation or obviousness under a new claim construction when that construction is first proposed by a patent owner in its response following the institution decision. The court ultimately vacated the decisions and remanded to the PTAB to reconsider.

The Senate Subcommittee on Intellectual Property today held a hearing on Oversight of the United States Patent and Trademark Office (USPTO), with USPTO Director Kathi Vidal as the sole witness. Only a handful of senators questioned Vidal, and only one significantly challenged her in questioning. The hearing differed considerably from the House IP Subcommittee’s Oversight Hearing in April, where Vidal was repeatedly taken to task on the Office’s then-recently issued Advance Notice of Proposed Rulemaking (ANPRM).

Of the many ways that the Patent Trial and Appeal Board (PTAB) works to the detriment of the U.S. innovation economy, one of the most nefarious is the Chinese government’s use of patent validity review to advance its national interests. Recent briefing filed at the PTAB suggests that the Board is quietly helping China win the war for technological supremacy during the 21st century, mainly by destroying the economic interests of American small businesses innovating in industrial sectors critical to American national security.

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.

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.

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.

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.

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…

Parus Holdings, Inc. was unsuccessful today in its bid to the U.S. Court of Appeals for the Federal Circuit (CAFC) to reverse two Patent Trial and Appeal Board (PTAB) decisions invalidating its patent claims for voice recognition technology. The CAFC in part said in a precedential decision authored by Judge Lourie that since Parus violated the U.S. Patent and Trademark Office’s (USPTO’s) regulation against arguments incorporated by reference, the PTAB did not have to consider evidence related to those arguments.

In two separate precedential decisions authored by Chief Judge Moore today, the U.S. Court of Appeals for the Federal Circuit (CAFC) delivered victory for Teleflex Innovations, S.À.R.L. when it upheld Patent Trial and Appeal Board (PTAB) rulings that found Medtronic, Inc. had failed to prove Teleflex’s patent claims for catheter technology used in interventional cardiology procedures unpatentable. The court issued a related decision last month, authored by Judge Lourie, also finding for Teleflex. Chief Judge Moore joined Lourie’s opinion, while Judge Dyk dissented.

One of the most intriguing, and frankly long overdue, reforms the United States Patent and Trademark Office (USPTO) needs to consider is putting an end to the practice of for-profit entities like Unified Patents and RPX filing petitions challenging a patent. This practice has recently been called into question by the USPTO through an Advance Notice of Proposed Rulemaking (ANPRM) published in the Federal Register. The ANPRM, among many other things, raises the question whether the Office should discretionarily deny post grant proceedings filed by for-profit, non-competitive entities that in essence seek to shield actual real-parties-in-interest (RPIs) and privies from the statutory estoppel provisions contained within the America Invents Act (AIA). And two recent decisions from the Office of Patent Legal Administration (OPLA) provide even more hope that the USPTO will take a reasonable approach going forward when it comes to RPIs.

The Merit Systems Protection Board (MSPB) issued a decision on May 5 granting Patent Trial and Appeal Board (PTAB) Administrative Patent Judge (APJ) Michael Fitzpatrick’s request for corrective action with respect to alleged retaliatory personnel actions against him by senior management officials at the Department of Commerce and U.S. Patent and Trademark Office (USPTO). The 131-page decision said that Fitzpatrick filed the appeal to the MSPB in 2021, following punishment for “protected whistleblowing activity.