Frank Bernstein

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Yes, You Can Bargain Away Your Right to File IPR Petitions

For the second time in four months, the U.S. Court of Appeals for the Federal Circuit has issued a precedential opinion about forum selection clauses (FSC) in confidentiality agreements. On October 7, 2021, the Federal Circuit issued a precedential opinion in Kannuu Pty Ltd. v. Samsung Electronics Ltd. et al., holding that, in a non-disclosure … Continue Reading

AFCP 2.0 Extended: Your Mileage May Vary

On October 12, 2021, the USPTO extended its program for after-final patent prosecution practice, AFCP 2.0, to September 30, 2022. The USPTO initiated the “pilot” program in 2013, to speed up prosecution and to increase contact between Examiners and applicants. Although the USPTO has not issued statistics about the results of the program, applicants still … Continue Reading

Will Patents Become More Political? The PTO Begins to Implement Arthrex

In United States v Arthrex, the Supreme Court held that 35 U.S.C. §6(c), which sets forth the authority of Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”), is unconstitutional because APJs effectively wield the power of principal officers (who require Senate confirmation) while being appointed as inferior officers (who do not require Senate confirmation) … Continue Reading

The Supreme Court Provides a Different Fix to Make APJs Inferior Officers

On June 21, 2021, in United States v. Arthrex, the United States Supreme Court ruled that Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”) are unconstitutionally appointed because they effectively wield the power of principal officers while being appointed as inferior officers. 594 U.S. ____ (2021).… Continue Reading

BEST MODE: Compliance with the Duty of Disclosure Requires Vigilance and Self-Awareness

In a recent post, we discussed the importance of complying with the US Patent and Trademark Office’s duty of disclosure under Rule 56 of the Rules of Practice. This post focuses on the existence of this duty throughout the entire prosecution of a patent application, in a specialized factual context involving a priority application outside … Continue Reading

New AIA Rules Implement Hunting Titan and Preserve a Dual Role for the PTAB

On December 21, 2020, the US Patent and Trademark Office (Office) published final rules in the Federal Register, implementing the decision in Hunting Titan, Inc. v Dynaenergetics Europe GMBH as follows regarding motions to amend in inter partes review (IPR) and post-grant review (PGR) proceedings: The patent owner bears the burden of persuasion to show, … Continue Reading

The PTAB Informs: Applying Apple v. Fintiv

On July 13, 2020, the Patent Trial and Appeal Board (PTAB or Board) designated as informative two opinions applying its now precedential Apple Inc. v. Fintiv, Inc. opinion, which set forth factors governing the exercise of the PTAB’s discretion to deny institution of a post-issuance proceeding. In these two informative opinions, Apple Inc. v. Fintiv, … Continue Reading

USPTO Extends Patent and Trademark Filing and Fee Deadlines Further in Response to COVID-19

Earlier this month, we provided posts here and here, outlining the United States Patent and Trademark Office’s (“USPTO”) announcement of the availability of certain deadline waivers to help patent and trademark applicants and owners file papers during the COVID-19 outbreak. The original notice granted a 30-day extension on certain deadlines falling between March 27 and … Continue Reading

PTAB Time-Bar Determinations Under 35 U.S.C. §315(b) Are Final and Not Appealable

Yesterday, in Thryv, Inc., f/k/a Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., the U.S. Supreme Court ruled 7-2 that the non-appealability of Patent Trial and Appeal Board (PTAB) institution decisions encompasses PTAB decisions on whether a statutory time bar applies. More specifically, 35 U.S.C. §314(d), which sets forth the finality and nonappealability of … Continue Reading

It’s Printed, but Is It Published? More Informative Guidance from the PTAB

In prior blog posts here and here, we explored various aspects of the Patent Trial and Appeal Board’s (“PTAB”) analysis of documents as printed publications during patent examination and inter partes review (“IPR”). The PTAB’s Precedential Opinion Panel (“POP”) has been busy reviewing various decisions in this area, and recently designated four of them as … Continue Reading

A “Printed Publication” in a Pending Patent Application May Not Be a “Printed Publication” in an IPR

In a newly-designated precedential decision, Ex parte Grillo-López, Appeal 2018-006082 (Jan. 31, 2020) (designated Apr. 7, 2020 as Precedential), the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) differentiated the procedures in a pending patent application and an Inter Partes Review (“IPR”) proceeding for establishing whether a document qualifies as … Continue Reading

Bad Faith Finding Still Required to Ban Patent Infringement Accusations

In Myco Industries, Inc. v. BlephEx, LLC,[1] decided April 3, 2020, the Federal Circuit reversed a district court’s preliminary injunction which forbade a patent owner from accusing others of patent infringement. The Federal Circuit found a lack of a finding of bad faith in the patent owner’s accusations of infringement. The Federal Circuit also found … Continue Reading

USPTO Joins Other National Patent Offices by Extending Filing and Fee Deadlines in Response to COVID-19

The recent passage of the massive Coronavirus Aid, Relief, and Economic Security (“CARES”) Act by Congress authorized the United States Patent and Trademark Office (“USPTO”) to temporarily adjust its statutory time periods for replies and fees to help applicants file during the COVID-19 outbreak. With countless individuals and businesses significantly impacted by the growing pandemic, … Continue Reading

It’s Printed, But Is It Published? The PTAB Expands Its Discussion of Prior Art Status

Following the Patent Trial and Appeal Board’s (PTAB) Precedential Opinion Panel’s selection of Hulu, LLC v. Sound View Innovations, LLC[1] as precedential, on January 23, 2020, the PTAB issued a non-precedential decision in Cisco Systems, Inc. v. Centripetal Networks, Inc.[2]  In Cisco, the PTAB provided yet more discussion of criteria for determining whether a printed … Continue Reading

The American Rule Lives in Patent Law: “Expenses” Do Not Include USPTO Legal Salaries

In a decision that will delight patent applicants, on December 11, 2019, the U.S. Supreme Court decided Peter v NantKwest, Inc.[1], holding that the US Patent and Trademark Office (USPTO) was not entitled to recover pro rata salaries for legal staff (in the context of the USPTO, attorney’s fees) as “expenses” in district court litigation.  … Continue Reading

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (Third and Last of a Series)

Introduction In two recent articles (see parts one and two of series), we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[i]  This article completes that discussion, addressing motions for joinder, and procedures regarding remands and the PTAB’s default protective order. 1. Motions for joinder … Continue Reading

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (Second of a Series)

Introduction In a recent article, we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[1]  This article continues that discussion, addressing institution decisions on multiple petitions, and motions to amend. 1. Multiple petitions challenging the same patent The July 2019 Update … Continue Reading

PTAB Trial Practice Guide Update Codifies Recent PTAB Decisions and Procedure (First of a Series)

Introduction In July 2019, the Patent Trial and Appeal Board (PTAB) issued an Update to the PTAB Trial Practice Guide.[i]  The July 2019 Update documents practices and procedures that the PTAB has found useful, and in some instances, summarizes or repeats practices and procedures from precedential PTAB opinions. The US Patent and Trademark Office’s announcement … Continue Reading
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