The PTAB Update May 2020

Welcome to Winston & Strawn’s Patent Trial and Appeal Board (PTAB) Update. This quarterly newsletter provides short summaries of recent developments at the PTAB and select decisions related to IPR and other post-grant proceedings.

PTAB launches the Legal Experience and Advancement Program (LEAP) for the next generation of patent practitioners

On April 28, 2020 the USPTO announced the LEAP program to provide opportunities for new practitioners to obtain oral argument experience before the Board. The program provides up to 15 additional minutes of oral argument time to any party when a qualifying new practitioner will be arguing. Practitioners who qualify for this program are attorneys or patent agents with three or fewer substantive oral arguments in any federal tribunal and seven or fewer years of experience as a licensed attorney. The argument may be split with a more experienced counsel, provided that the new practitioner is given a “meaningful and substantive opportunity to argue,” such as by arguing claim construction or a motion to exclude. In addition, the more experienced practitioner may clarify any statements on the record.

Selected decisions of interest

Thryv, Inc. (f/k/a Dex Media, Inc.) v. Click-to-Call Technologies, LP, 18-916 (2020)

Supreme Court holds that institution decisions are not appealable and overruled a Federal Circuit decision that allowed for parties to appeal PTAB institution decisions where there was a question of whether the petition was timely under 35 U.S.C. §315(b).

Nike, Inc. v. Adidas AG, 19-1262 (Fed. Cir. April 9, 2020)

Federal Circuit held that PTAB may invalidate substitute claims on invalidity theories not brought forward by the petitioner, but it must first provide notice and an opportunity for the parties to respond.

Ex parte Grillo-Lopez, Appeal 2018-006082 (PTAB. Jan. 31, 2020) (precedential) 

This opinion was designated as precedential by the Precedential Opinion Panel in April. The decision clarified that the standards for a printed publication in inter partes review (IPR) and ex parte reexaminations are different. In an IPR, the petitioner is required to present evidence and arguments sufficient to show that it is reasonably likely that it will prevail on the issue of publication. In an ex parte examination, however, after the USPTO has made a prima facie case of publication, the burden shifts to the applicant to overcome that case.

Solaredge Technologies Ltd. v. SMA Solar Technology AG, IPR2020-00021, Paper 8 (PTAB April 10, 2020)

PTAB institution decision holding that application admitted prior art (that is, admissions regarding the state of the prior art within the specification of the challenged patent) can be used to challenge claims in an IPR.

New PTAB Petitions

Source: Docket Navigator, to May 11, 2020

 

 Overall Patent Institution Rate

Source: Docket Navigator, to May 11, 2020

We hope that this update is useful in keeping you updated on the PTAB. Questions can be directed to the editor listed below.