PTAB Recalibrates Related Party Analysis
Ropes & Gray | Patents Post-Grant
by Scott McKeown
1d ago
Valve Precedent Reined In by Director Review Order Last week the Director vacated IPR denials based upon a misapplication of Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, Paper 11 (Apr. 2, 2019) (precedential). As a reminder, Valve, extended the discretionary denial practices set out in General Plastic of so-called “follow-on” petitions of a same party to that of related parties having a “significant relationship.” However, over the years the unique scenario of Valve started to be argued as applicable to more typical scenarios where different parties happened to be litigating the ..read more
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PTAB Virtual Hearings
Ropes & Gray | Patents Post-Grant
by Scott McKeown
6d ago
Boardside Chat Thursday The PTAB will conduct its next Boardside Chat webinar this Thursday, March 21st, from noon to 1 p.m. ET, to discuss hearings before the Board. The presentation will include a virtual tour of the hearing rooms, along with information on some of the updated technical capabilities available, as well as statistics on in-person versus remote hearings over the past year. A panel of PTAB judges will share practical tips and discuss strategies that may be effective in hearings before the Board. The panel features: Acting Deputy Chief Administrative Patent Judge Michael Kim Lea ..read more
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PTAB Amendment Pilot to Become Permanent
Ropes & Gray | Patents Post-Grant
by Scott McKeown
3w ago
USPTO Issues NPRM to Codify Amendment Pilot Permanent While awaiting the overdue Notice of Proposed Rulemaking (NPRM) on the hodgepodge of proposals from last year, the agency has issued a few NPRMs over the past week. First was a proposal to streamline the pro hac vice practice (non-event). Late last week a slightly more interesting NPRM was issued to formalize the provisions of the Motion to Amend (MTA) Pilot Program. (here) As a reminder, the MTA Pilot Program provides a patent owner who files an MTA with options to request preliminary guidance from the PTAB on the MTA and to file a revised ..read more
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Where are the New PTAB Rules?
Ropes & Gray | Patents Post-Grant
by Scott McKeown
1M ago
ANPRM an Unnecessary Slog to a Small Rule Package It has been almost a year since the Patent Trial & Appeal Board (PTAB) released its Advanced Notice of Proposed Rulemaking (ANPRM) on AIA trial practices. As a reminder, the ANPRM was a sprawling collection of rule proposals and requests for public feedback. I previously pointed out that the proposal was unnecessarily ambitious and was destined to be bogged down for proposing to exceed the agency’s regulatory jurisdiction. Well, the wait is almost over. The political repercussions of the past year have driven out all controversial proposals ..read more
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USPTO Appeals Panel to Clarify Antibody Claiming in MPF & Jepson Format
Ropes & Gray | Patents Post-Grant
by Scott McKeown
2M ago
Post-Amgen Claiming Techniques in Focus Last year’s landmark decision in Amgen V. Sanofi emphasized that “the more a party claims, the broader the monopoly it demands, the more it must enable.” That is, particularly when claiming a broad genus of antibodies, the specification cannot be a research assignment to engage in trial and error as to the recited claim scope. Since that time and perhaps dealing with inadequate specifications filed prior to Amgen, prosecutors have considered whether fallback claiming techniques such as Jepson format claiming or mean-plus-function formatted claims can at ..read more
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PTAB Boardside Chat Thursday
Ropes & Gray | Patents Post-Grant
by Scott McKeown
2M ago
Common AIA Issues Discussed This coming Thursday January 18th (noon to 1 p.m. (EST)) the PTAB will host its first Boardside Chat of the year. The program will discuss issues that typically arise during an America Invents Act (AIA) proceeding before the Board (PTAB). Topics will include: • Preparing a patent owner preliminary response • Preparing a patent owner response • Motions to amend • New arguments • Motions to strike As always, a question-and-answer session will follow the presentation. Questions may be sent in advance or during the webinar to PTABBoardsideChat@USPTO.gov. Register (here ..read more
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OTDP Land Mines & Cellect
Ropes & Gray | Patents Post-Grant
by Scott McKeown
3M ago
Avoiding Cellect The Federal Circuit’s In re Cellect ruling has significant implications for patent portfolios, emphasizing the need for careful planning to avoid obviousness-type double patenting (OTDP) that could compromise statutory term and patent validity. Particularly, patents with patent term extension (PTE) may face increased risk, as reference patents in the same family might have already expired during the PTE period, rendering claims incurably invalid if not addressed promptly. What should practitioners and in-house counsel be doing right now? Join me Wednesday, January 10th for a f ..read more
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Dynamic Drinkware Analysis Unnecessary for AIA Patents
Ropes & Gray | Patents Post-Grant
by Scott McKeown
4M ago
Claim-Based Analysis Required for Pre-AIA Patents Only One of the more confusing developments in patent law was pronounced in Dynamic Drinkware v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015). In Dynamic the Court held that a provisional application’s effectiveness as prior art under 102(e) depends on its written description support for the claims of the issued patent. In other words, if the patent claims ABC, and C is not supported in the provisional, the provisional loses 102(e) prior art status for all of its disclosure. So, if looking to use the provisional date for AB alone ..read more
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PTAB Boardside Chat This Thursday
Ropes & Gray | Patents Post-Grant
by Scott McKeown
4M ago
Internal Procedures Discussed The U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) on the Patent Trial and Appeal Board’s (PTAB) pre-issuance internal decision circulation and review last month. The PTAB also issued a new Standing Operating Procedure (SOP) on pre-issuance and post-issuance decision review, and updated and renumbered its SOP on handling remands from the Federal Circuit. This Thursday (11/16) the PTAB will host a Boardside Chat webinar from noon to 1 p.m. ET to discuss the NPRM and the SOP with PTAB’s Vice Chief Judge Melissa Haapala. While ..read more
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Senate Judiciary To Discuss Prevail Act
Ropes & Gray | Patents Post-Grant
by Scott McKeown
5M ago
Controversial Proposals Given Air Time at Year End The U.S Senate Judiciary Committee will hold a hearing today entitled: “Reforming the Patent Trial and Appeal Board – The PREVAIL Act and Proposals to Promote U.S. Innovation Leadership.” The hearing appears to be an effort to engender perception that the Prevail Act has some level of traction on the Hill. Yet, the Act, like all of its predecessors, remains too lopsided to advance beyond the committee stage. The presiding chair of the Committee is Senator Coons, who just so happens to be the co-sponsor of the Prevail Act (as well as its previo ..read more
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