PTAB Rules

U.S. Patent and Trademark Office Director Kathi Vidal recently altered a decision by the Patent Trial and Appeals Board to address the use of applicant admitted prior art in inter partes review petitions.

In PTAB trials, rules regulate when evidence may be presented by a party to ensure the opposing party a fair opportunity to respond to such evidence.

The new director of the USPTO recently issued a memorandum mandating specific procedures at the PTAB for analyzing discretionary denial of PTAB proceedings under Fintiv.

Covered business method (CBM) review is scheduled to end on September 15 this year. Part of the Leahy-Smith American Invents Act, CBM review was envisioned as a transitional tool for accused infringers to challenge weak patents—a shield against so-called patent trolls.

On August 7, 2020, the PTAB and the PTAB Bar Association hosted the first ever PTAB Oral Argument Boot Camp for LEAP eligible practitioners which included opening remarks from USPTO Director Andrei Iancu, a mock inter partes review before sitting PTAB judges, and an oral argument practicum.

We analyze the initial results of the pilot program for motions to amend ("MTA") and conclude that, while it is still early in development and subsequent results could lead to new insights, for now at least patent owners may be better off using alternative approaches such as reissue or ex parte reexamination.

Two PTAB decisions recently designated as informative show that failure to provide detailed evidence of motivation to combine references for an obviousness challenge, can sink a Petition before or after institution of trial.

On October 31, the Federal Circuit held that PTAB judges were principal officers appointed in violation of the Appointments Clause and, to remedy the violation, severed the portion of the Patent Act conferring them (through Title 5) with for-cause removal protection.

Overturning prior PTAB precedent, the Federal Circuit has now held that <em>post-facto</em> business mergers that create a new real-party-in-interest (“RPI”) trigger the one-year bar date for filing IPR petitions on patents asserted in litigation against the new RPI.