Weekly IP Takeaways

In IP Blog

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

As a member of the State Bar of Texas, I have been privileged to attend the annual Advanced Patent Litigation conference for a number of years. It is always a stellar, very high-end conference that I have enjoyed thoroughly. This year’s conference was on July 18-19 in San Antonio, TX. Here are a few (of many) interesting, helpful takeaways and practice pointers from the conference:

1. The recent change of the claim construction standard in the Patent Trial and Appeal Board (PTAB) from the broadest reasonable interpretation (BRI) standard to the Phillips standard used in district courts affords litigants interested in attempting to stay patent litigation pending the outcome of a PTAB proceeding an additional argument in support of a stay. In other words, the potentially duplicative effort and the guidance of the PTAB will help streamline a district court case, and thus, support a possible stay. In fact, a judge on the judges’ panel generally indicated that federal judges are relieved that the claim construction standards are now the same, and that they tend to believe that a three judge panel in the PTAB will provide as good or better construction than the district judge him/herself.

2. District courts and the Federal Circuit are taking a much harder line on venue in patent cases.

3. Do not delay in raising a disputed claim construction issue that requires a decision by the Court per O2 Micro. A delay or failure to raise a dispute regarding claim construction can result in a waiver of the argument.

4. In a patent case involving a patent that could be subject to a Section 101 challenge, it is important for a plaintiff to plead factual allegations supporting eligibility that are derived from the claims or specification. At the Rule 12 stage, such allegations, if more than bare bones legal conclusions or factual assertions, must be taken as true and can defeat the motion.

5. Be careful advocating in parallel proceedings (PTAB and district court) when advocating for favorable claim constructions depending on the venue. In other words, a defendant may proffer a broad claim construction in the PTAB to support invalidity, but a narrow claim construction in the district court to avoid infringement. A judge on the judges’ panel warned about potentially leading a district judge into error if this gets pushed too far.