The American Rule Is Still the Rule

Photo of John P. Isacson
John P. Isacson

Laura Peter, Deputy Director, Patent and Trademark Office v. NantKwest, Inc., No. 18-801 (December 11, 2019)

Today, the Supreme Court overruled a recent interpretation of 35 USC §145 by the U.S. Patent and Trademark Office (USPTO), which permits the USPTO to recover expenses against applicants who filed civil actions against the USPTO. Section 145 allows unsuccessful parties at the USPTO to file a district court action for review of a decision from the Patent Trial and Appeal Board instead of going directly to the U.S. Court of Appeals for the Federal Circuit. Traditionally, the statute has been interpreted to permit the USPTO to recover expenses such as copying costs and expert fees.

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Updated Procedures at the Patent Trial and Appeal Board

By John Isacson

July of 2019 has been an active month for the Patent Trial and Appeal Board (PTAB).  The PTAB issued a Trial Practice Guide Update that addresses:

  • Factors that may be considered by the Board in determining when additional discovery will be granted
  • The revised claim construction standard to be used in IPR (inter partes review), PGR (post-grant review), and CBM (covered business method) proceedings
  • The submission of testimonial evidence with a patent owner preliminary response
  • Information to be provided by the parties if there are multiple petitions filed at or about the same time challenging the same patent
  • Motion to amend practice
  • Factors that may be considered by the Board in determining whether to grant a motion for joinder
  • Procedures to be followed when a case is remanded
  • Procedures for parties to request modifications to the default protective order

The July 2019 Update can be accessed on the PTAB website.

Additionally, on July 10, 2019, the PTAB made precedential its Order in IPR2014-00116 (Paper No. 19).  This Order concerned the PTAB’s Testimony guidelines, and clarified that defending counsel can confer with their witness prior to taking re-direct testimony provided that preceding cross-examination has concluded.  If re-cross is commenced, counsel may no longer confer with their witness until re-cross concludes.  This procedure differs from other venues, where counsel may not confer with their witness until the deposition is over.

Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

By Reza Mollaaghababa
In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In particular, 35 U.S.C. §102(a)(1) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” Continue reading “Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales”