2019 PTAB Bar Association Annual Conference Registration

2019 PTAB Bar Association Annual Conference Agenda Announced, Registration Open The 2019 PTAB Bar Association Annual Conference will take place March 14 – 15, 2019, at the Ritz-Carlton in Washington, D.C. Pre-conference sessions will be offered March 13. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, …

PTAB Roundup

CAFC: Printed publication case revised.The Federal Circuit reissued its July 27 opinion (reported in the August 10, 2018 Roundup) that vacated the Board’s conclusion that a catalog was not a prior art printed publication. In coming to the same result, the Court explained that the catalog does not need to be made directly available to a …

PTAB Roundup

CAFC: Non-prior art evidence filed with reply supported the motivation to combine. The Federal Circuit affirmed the Board’s unpatentability decision. On appeal, the patent owner argued that it did not have notice and an opportunity to respond in the IPR to evidence submitted with the petitioner’s reply. The Court disagreed, explaining that the petitioner properly used reply …

PTAB Roundup

CAFC: Involuntarily dismissed complaint triggers one-year bar.  In Click-To-Call Technologies v. Ingenio, 899 F.3d 1321 (Fed. Cir. 2018), the Federal Circuit held that voluntary dismissal without prejudice does not render service of an infringement complaint a nullity for the purposes of 35 U.S.C. § 315(b)—the defendant’s one-year period for filing an IPR continues to run. …

PTAB Roundup

CAFC: Competitor has standing to appeal its IPR, obtains reversal. The Federal Circuit held that the petitioner/appellant has standing to appeal its IPR even though it was not accused of infringement and did not concede that it infringes. The Court was persuaded by the appellant’s declarations (submitted in reply to a standing challenge in appellee’s responsive …

PTAB Roundup

CAFC: Petitioner bears burden to show that it is not barred. The Federal Circuit clarified that the petitioner bears the burden of persuasion to demonstrate that its petition is not time-barred under 35 U.S.C. § 315(b). The petitioner’s initial identification of the real party in interest does not create a “rebuttable presumption,” but as a practical matter, …

PTAB Roundup

CAFC en banc in part: No more “nullity” exception for one-year bar. Confining its opinion to a footnote, the en banc Court held that a voluntary dismissal without prejudice does not create an exception to the one-year bar of 35 U.S.C. § 315(b). The Board previously held—in a decision it designated precedential—that the petitioner in …

PTAB Roundup

CAFC en banc: Applicants filing § 145 actions do not pay Office attorneys’ fees. In the original Federal Circuit panel ruling, the majority affirmed the district court’s award of expenses that the Office has traditionally sought in § 145 actions (e.g., travel expenses, expert fees, printing expenses), but reversed the district court’s denial of the …

PTAB Roundup

[ihc-hide-content ihc_mb_type=”block” ihc_mb_who=”reg” ihc_mb_template=”” ][/ihc-hide-content]CAFC: No Tribal sovereign immunity from IPR. The Board denied the Saint Regis Mohawk Tribe’s motion to terminate, and the Federal Circuit affirmed, holding that “tribal sovereign immunity cannot be asserted in IPRs.” The Supreme Court held in Fed. Maritime Comm’n v. S.C. State Ports Auth., 535 U.S. 743, 754–56 (2002) that tribal …

PTAB Roundup

CAFC: Post-SAS remand on motion. All challenged claims survived the IPR after the Board instituted on only one of the two proposed grounds. The petitioner appealed, and then timely moved for remand to the PTAB for consideration of the non-instituted ground in light of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). The …