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Expansion of ITC Domestic Industry Coupled with PTAB Immunity = Greater ITC Appeal

Since Ebay v. MercExchange in 2006, patentees have lamented the practical loss of injunctions in most patent litigation. In the 20 years since, neither the courts nor Congress have shown any interest in revisiting or recalibrating Ebay. Of course, patent infringement complainants before the International Trade Commission (ITC) have always been guaranteed a form of special injunctive relief (exclusion orders), but the ITC’s “domestic industry” jurisdiction has always been construed narrowly by the agency. Given the limited jurisdiction, despite the desirable form of relief, ITC proceedings have been far less common than traditional district court litigation.

Last week, however, the Federal Circuit rejected the ITC’s longstanding and narrow view of domestic industry, potentially opening its doors to a far greater percentage of patentees. Independently, the USPTO’s Patent Trial & Appeal Board (PTAB) also withdrew its Biden-era discretionary guidance last week, which prevented discretionary denials under 314(a) on IPR petitions co-pending with an ITC action. The upshot of these near simultaneous developments is that the ITC is now available to a greater number of patentees, at a time when filing at the ITC may also effectively guarantee immunity from PTAB review.

That is a one-two-punch that no plaintiff-friendly Texas court can rival.

Continue Reading Did Injunctions Just Make a Return to U.S. Patent Litigation?
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Vidal Memo Withdrawn

As expected, the USPTO has now rescinded the June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Memorandum) issued by Former Director Vidal. The change is the first in many expected recalibrations of the new administration designed to return practices back to that of the previous Trump appointees (if not beyond).

Parties to post-grant proceedings are now to PTAB precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A).

What this means in simpler terms is:

  • A PTAB filing concurrent with an ITC case is subject to 314(a) denial again (and, in my view, will almost certainly be decided that way).
  • There is no longer a compelling merits factor to offset Fintiv factors.
  • PTAB judges may rely again on a trial date as opposed to average time to trial.
  • Sotera stipulations are still viable

The notice also renders void previous Director Review decisions that relied on the Memorandum (a significant number of Director Review decisions under former Director Vidal). The notice states that such decisions (or portions thereof) shall not be binding or persuasive on the PTAB.

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Free Webinar February 27th

It’s been an eventful (cough .. understatement.. cough) few months for USPTO judges and patent examiners as the Trump administration has seemingly targeted all federal agencies as wasteful money pits. Stakeholders are also struggling to make sense of USPTO job cuts, the impact of new agency leadership, and practice/workflow expectations going forward.

Join me for this timely webinar on expected impacts to patent prosecution and PTAB workflows resulting federal return-to-work mandates, retirements/resignations, further job cuts, recent fee increases, and staffing policies/changes.

Navigating USPTO Workflow Changes Amid Political Disruption — (Thursday February 27th 12- 1PM (EST))

Register (here)

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Early 2025 CLE

We are two weeks away from the marquee PTAB practitioner event of 2025 – PTAB Masters! This high-level, interactive, limited enrollment program includes discussions on all aspects of the PTAB practice led by highly experienced practitioners and top thought leaders in the industry (and then there’s me). Topics include best practices for petitioners and patent owners, pending policy initiatives, parallel litigation issues, appeals, and more.

Hope to see you there, again, registration is limited (Register here)

Director Considers Common Customer/Supplier Indemnification Scenarios

Earlier this year, the USPTO Director clarified that competitors of a multi-defendant suit do not necessarily share a “significant relationship” consistent with PTAB precedent to justify a discretionary denial of an otherwise meritorious IPR petition. Ford Motor Co. v. Neo Wireless LLC (IPR2023-00763). Late last week, the Director considered another common multi-party litigation scenario. This time the Director explored the degree of interest (i.e., degree of cooperation, contractual obligation, or common purpose) necessary to create an RPI or privity relationship such that a 315(b) bar of one such party applies to the other — specifically, in customer/supplier indemnification scenarios.

In Luminex International Co. Ltd v. Signify Holdings B.V., the Director considered whether an indemnification obligation, absent more, demonstrates an RPI relationship, or creates privity between a customer and supplier.

Continue Reading PTAB: Customer/Supplier RPI & Privity?
Another Symbolic Gesture at Year End

This past Thursday the Senate Judiciary Committee voted to advance the so-called Promoting Respecting Economically Vital American Innovation Leadership Act (PREVAIL) to the Senate floor — barely, by a vote of 11-10. The Bill is now eligible for a formal vote, at least in theory. But given the limited legislative calendar left in 2024, coming change to the Senate majority/committee leadership, and the significant opposition to anything related to drug pricing from democratic lawmakers, the Committee vote is little more than a symbolic gesture to create the appearance of traction for 2025.

If this development sounds eerily familiar its because a similar political show was put on last year at this exact same time.

Continue Reading Prevail Act Limps Out of Senate Judiciary Committee
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Federal Circuit to Reconsider In re Cellect Carve Out?

Back in August, the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. That decision distinguished In re Cellect as not generally deciding that a second later expiring patent can always serve as a proper OTDP reference. And more particularly that a first-filed, first issued, later-expiring claim cannot be invalidated by a later filed, later issued, earlier expiring claim (yes, its a mouthful).

Yesterday, that decision was petitioned for en banc review.

Continue Reading Allergan OTDP Exception – Rehearing?
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Final Rules Expand Director Review Reach

The USPTO has now issued a final rule package (here) to implement the Director Review process in AIA trial proceedings. The final rules follows the Notice of Proposed Rulemaking (NPRM) of April 16th and responsive public comments.

Based on the comments, the final rule proposal has been revised to expand Director Review to derivation proceedings, and will include other decisions in AIA proceedings outside of just institution decisions and Final Written Decisions (FWD) such as decisions to terminate.

The final rule provides that a party to an AIA proceeding may request Director Review of:

  1. Decision on institution
  2. Final decision (defined as a final written decision in an inter partes or post grant review proceeding or a final decision in a derivation proceeding)
  3. Decision granting rehearing of a decision on institution or a final decision
  4. Other decision concluding an AIA proceeding

The final rule further provides that the Director may initiate a review of such decisions sua sponte; sets forth the timing and format of a party’s request for Director Review; addresses the impact of Director Review on the underlying PTAB proceeding; clarifies the time by which an appeal to the U.S. Court of Appeals for the Federal Circuit must be filed; and provides that the Director may delegate a review.

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CAFC Distinguishes Cellect Based on First-in-Time Patent Term

Today the Federal Circuit issued its long-awaited decision in Allergan v. MSN Laboratories Private Ltd. As expected by many following the case, the Court decided that being “first” matters in double patenting scenarios—at least when the subject and reference patent claim a common priority. (here)

Allergan answers one question, but others remain.

Continue Reading Allergan “First” Exception To Cellect OTDP Scenarios
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FWD Boilerplate Encourages Rework

Rule 42.73 (d)(3)(i) explains that a Patent Applicant or a Patent Owner is precluded from taking action inconsistent with a claim cancellation, including, obtaining in any patent a claim that is not patentably distinct from a finally refused or cancelled claim (IPR/PGR/reexam). Last week the Federal Circuit clarified the scope of this rarely applied PTAB rule in SoftView v. Apple.

In practice, the agency has very rarely applied Rule 42.73. Examiners don’t appear to be aware of the rule when prosecuting continuation filings or reexamination/reissues. To my knowledge there has been no examiner training and there are no MPEP insert paragraphs. And PTAB judges prefer to re-apply the art used to cancel the earlier claims over a less familiar estoppel analysis.

Far more troubling, however, is the PTAB practice of suggesting to Patent Owners that they may obtain new/amended claims after claim cancellation in an IPR/PGR through patent reexamination or reissue.

Continue Reading CAFC Backs Patent Owner Estoppel – PTAB Should Stop Suggesting Otherwise