Ropes & Gray | Patents Post-Grant
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Patents Post-Grant is written by Scott McKeown of Ropes & Gray LLP and provides insights on Patent Litigation, the Patent Trial & Appeal Board, Inter Partes Review, Reexamination procedure, and Post-Grant Review.
Ropes & Gray | Patents Post-Grant
23h ago
Next Director Likely to Swing the Pendulum Back
PTAB 314(a) discretionary practices have followed the so-called “Fintiv factors” for years now. Under former Director Iancu (Republican appointee) Fintiv denials were so commonplace that overall institution rates dropped almost 10%. Current Director Vidal (Democrat appointee) recalibrated PTAB Fintiv practice via memo, and, as a result, Fintiv denials are relatively uncommon today. As Director Vidal’s memo is not committed to regulation, the next Director is free to swing the pendulum back.
It may seem that the likelihood of any such change is de ..read more
Ropes & Gray | Patents Post-Grant
4d ago
Missed Opportunity & Further Patent Owner Headaches
The wait is finally over! (no not Taylor Swift’s new album…think nerdier….like way nerdier)
Last Friday the USPTO finally released its Notice of Proposed Rulemaking (NPRM) directed to Patent Trial & Appeal Board Practices (here) a year after its overly-ambitious Advanced NPRM (ANPRM) was released. While readers of this blog already knew what was going to be in the NPRM, the release of the NPRM at least confirms that the agency still intends to move something forward in the waning months of the Vidal administration. Whether the agency ..read more
Ropes & Gray | Patents Post-Grant
1M 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
Ropes & Gray | Patents Post-Grant
1M 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
Ropes & Gray | Patents Post-Grant
1M 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
Ropes & Gray | Patents Post-Grant
2M 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
Ropes & Gray | Patents Post-Grant
3M 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
Ropes & Gray | Patents Post-Grant
3M 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
Ropes & Gray | Patents Post-Grant
4M 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
Ropes & Gray | Patents Post-Grant
5M 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