IPR – PTAB Practice

March 26, 2019 by John M. Baird

Now in Effect – PTAB’s New Motion to Amend Procedures

Overview

As recently noticed in the Federal Register, the Patent Trial and Appeal Board’s (PTAB or Board) new motion to amend (MTA) procedures are now in effect as a one-year pilot program. [1] In sum, the patent owner (PO) now has the option to ask for preliminary guidance from the Board about its substitute claims in a first MTA, and can file a revised motion—with new substitute claims—after either the petitioner’s opposition paper or, if guidance was requested, after the Board issues its preliminary guidance. The revised MTA then generates a further opposition opportunity for the petitioner on a tight, six-week turnaround. In this article, we highlight important details of the new procedures, discuss the impact to PTAB practice, and provide some practice pointers to consider when forming PTAB strategy under the new procedures. Continue reading “Now in Effect – PTAB’s New Motion to Amend Procedures”

March 21, 2019 by Christopher J. Tyson

Law of the Case? Not in our Forum! Continuing Trend of PTAB Aggressively Using Its Discretionary Powers to Deny Institution of IPRs

By statute, Congress gave the Patent Trial and Appeal Board (“PTAB”) broad discretionary power in deciding whether or not to institute an inter partes review (“IPR”) proceeding.[1] Recently, the PTAB’s application of this discretionary authority to deny IPR petitions has continued to be aggressive in frequency and scope.

Several possible rationales for this continued upward trend exist including: (1) docket management, (2) concerns with protecting review process/patent owners from “abuse”, and (3) the SAS Institute Inc. v. Iancu decision.[2] Continue reading “Law of the Case? Not in our Forum! Continuing Trend of PTAB Aggressively Using Its Discretionary Powers to Deny Institution of IPRs”

March 3, 2016March 18, 2016 by Jason Luo, Ph.D.

PTAB’s Two Precedential Opinions and Impact of Previous Proceeding on AIA Reviews

The Patent Trial and Appeal Board (PTAB) recently designated two opinions as precedential, which are two of the only three precedential opinions in America Invents Act (AIA) reviews up to today. The precedential status means that these opinions are binding precedents that the PTAB judges must follow in the future.

The first opinion, LG Electronics Inc. v. Mondis Tech Ltd. (IPR2015-00937, Sept. 17, 2015), is related to the one-year bar date for filing an inter partes review (IPR). Based on 35 U.S.C §315(b), an IPR is barred if it is filed more than one year after a petitioner is “served with a complaint alleging infringement of the patent” (emphasis added). The question is which complaint should be the basis for the one year deadline if several complaints are served. Continue reading “PTAB’s Two Precedential Opinions and Impact of Previous Proceeding on AIA Reviews”