PTAB Top Stories 2020: Discretionary Denials, Motions to Amend, and Arthrex, Oh My! (Live MBHB Webinar)

Wed., Nov. 18, 2020 | 10:00-11:15 a.m. CT | Live MBHB Webinar via WebEx

Since the creation of AIA Trial Proceedings in 2012, parties have filed more than 11,500 petitions to the Patent Trial and Appeal Board (“PTAB”). Today, these proceedings and the PTAB are a significant aspect of every major patent litigation. Yet, the contours of these proceedings continue to change. Four key topics should be at the forefront of every PTAB practitioner’s renewed focus this year:

First, the PTAB is increasingly using its discretion to deny institution of AIA Trial Proceedings. The PTAB’s discretionary denials, however, are based on multi-factor tests that differ from the PTAB’s typical standard for institution—whether the petitioner has shown a likelihood that a claim is unpatentable. Litigants have started to challenge the PTAB’s discretionary denials in the courts, including in an APA action in the U.S. District Court for the Northern District of California and in a mandamus petition the U.S. Court of Appeals for the Federal Circuit. Still others have urged Congress to take action.

Second, despite the PTAB’s new motion to amend pilot program, where patent owners can receive preliminary guidance from the PTAB on these motions and revise them, patent owners are filing less motions to amend. Federal Circuit case law on motions to amend is evolving as well. This year, the Federal Circuit ruled that the PTAB itself may raise new grounds against proposed substitute claims in a motion to amend. And the Court recently ruled that proposed substitute claims can be challenged on § 101 grounds.

Third, there is yet another constitutional challenge to AIA Trial Proceedings pending at the Supreme Court. In Arthrex v. Smith & Nephew, the issue is whether administrative patent judges (“APJs”) were properly appointed to the PTAB. And if not, what is the remedy (e.g., should the cases ripe for Arthrex challenges (and others) be affirmed, vacated and remanded, reversed, some combination of the three)? Either way, Arthrex has left a wake of uncertainty in many PTAB cases and the Supreme Court has scheduled its first conference on the Arthrex petitions for a writ of certiorari at the end of September.

Fourth, the Supreme Court also held this year in Thryv v. Click-to-Call that the PTAB’s time bar decisions are not reviewable. The Court’s holding in Thryv seemingly shut the door on judicial review of virtually all institution issues. Yet, in Facebook v. Windy City, the Federal Circuit recently ruled that the PTAB’s joinder decisions are reviewable because they are separate and subsequent decisions to institution decisions.

MBHB partners James Lovsin and George “Trey” Lyons, III will take a look at these topics and more and the impact they have on AIA Trial Proceedings, including:

  • Discretionary Denials: What are Patent Owner strategies for obtaining discretionary denials? What are Petitioner strategies for avoiding them?
  • Motions to Amend: What benefit (or not) does the Patent Owner get for participating in the motion to amend pilot program? Can the Petitioner rely on the PTAB to present its own grounds to oppose the motions to amend? What are strategies for § 101 challenges to motions to amend?
  • Constitutionality: What are the updates and potential outcomes/impacts from Supreme Court action in Arthrex?
  • Appealability: What procedural issues are reviewable after Thryv and Windy City?

MBHB attorney(s) James Lovsin and George “Trey” Lyons, III

McDonnell Boehnen Hulbert & Berghoff LLP is committed to educating clients and friends of the firm with respect to significant developments and trends in the areas of intellectual property law.

NOTE: MCLE credit is not available for this archived recording.

Access an archived audio version of this webinar here