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2021 Joint Patent Practice CLE: USPTO & PTAB Update

Content Partner:  Joint Patent Practice Continuing Legal Education
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Description: A fireside chat with Drew Hirshfeld, performing the duties and functions of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO and Nanette Thomas, Assistant General Counsel, Catalent, provided information and update on how the COVID-19 pandemic did not impact filings with the Patent Office, USPTO’s plans with regard to adopting DOCX and moving away from PDF filings, the USPTO broadening its diversity and inclusion in the innovation economy, and support of the National Council for Expanding American Innovation and operations of the USPTO in view of the COVID-19 pandemic.
Lynda L. Calderone, presented an overview of the Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC, Appeal No. 20-440 on petition from a decision of the Court of Appeals for the Federal Circuit (CAFC), Appeal Nos. 2019-2054 and 2019-2081, Ms. Calderone explained the main issue of Minerva Surgical, Inc.’s (“Minerva”) appeal to the Supreme Court: “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.”  See, Petitioner’s Brief, Question Presented, at page (i).
Alicia Russo, presented on overview of the Fintiv Factors from Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) and as applied in Masimo. Masimo Corp. v. Sotera Wireless, Inc SRK Technology LLC v. Snap, Inc., Case No. 2:19-cv-20515-PSG-JPR (C.D. Cal.). The Board formally explicated prior decisions and identified a nonexclusive list of factors (Fintive Factors) on whether to institute where there is a parallel district court action:
1.       whether the district court granted a stay or evidence exists that one may be granted if a proceeding is instituted;
2.       proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision;
3.       investment in the parallel proceeding by the court and the parties;
4.       overlap between issues raised in the petition and in the parallel proceeding;
5.       whether the petitioner and the defendant in the parallel proceeding are the same party; and
6.       other circumstances that impact the Board’s exercise of discretion, including the merits.
Chris Holshouser, presented an explanation of the  new guidelines for PTAB Proceedings as provided in Hunting Titan, Inc. v. DynaEnergetics Europe Gmbh, IPR2018-00600 (PTAB july 6, 2020).  A Precedential Opinion Panel (“POP”), concluded that in the conduct of an inter partes review (“IPR”), the Board “may, in certain rare circumstances, raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, against substitute claims proposed in a motion to amend.”  Hunting Titan at 4.  Correspondingly, the POP concluded that where the Board raises a new ground of unpatentability, the Board must provide the parties notice of, and an opportunity to respond to, any ground of unpatentability the Board has raised sua sponte. Thereafter, the USPTO published final rules in the Federal Register which implemented the POP decision in Hunting Titan.  The new rules,  37 C.F.R. § 42.121(d) for inter partes review and 37 C.F.R. § 42.221(d) post-grant review, incorporate the holdings of Hunting Titan with regard to the burden of persuasion on the parties for proposed substitute claims, the discretion of the Board to grant or deny a motion to amend based on “readily identifiable and persuasive evidence of record,” and the right of the parties to respond.

Practice Areas: Intellectual Property Law
Online Media Type: Video
Production Date: 06/02/2021
Level: Intermediate
Category: Standard
Duration: 1 Hours, 23 Minutes
Online Format: On Demand

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Total Credits: 1.25
Specialty Credits: 
Status: Reciprocal Credit Available
Expiration: 06/01/2024
Training Type: Online

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Drew Hirshfeld - Performing the Duties of the Under Secretary of Commerce for Intellectual Property and Director, United States Patent and Trademark Office
Alicia Russo - Venable | Fitzpatrick
Lynda Calderone - Calderone Bullock LLC
Chris Holshouser - Getz Balich
This product is designed to provide information in regard to the subject matter covered. It is sold with the understanding that the publisher is not engaged in rendering legal, accounting, or other professional service. If legal advice or other expert assistance is required, the services of a competent professional person should be sought.

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