AIPLA Webinar Next Tuesday

For those seeking some PTAB-related CLE, consider next Tuesday’s AIPLA webinar @12:30 (EST) entitled:  Discretionary Denials Revisited: The New Politics of FintivRegister (here)

The program will explore the increasing politicization of the USPTO Director position, and what may be on the horizon relative to the uncodified discretionary

WDTX Losing its PTAB Mojo – Fintiv Outdated?

The Federal District for the Western District of Texas (WDTX) is a hotbed of patent litigation. Since 2016, the case load has increased some 700%, with a single federal judge (Hon. Alan Albright) now presiding over 20% of the nation’s patent litigation docket.  One of the primary attractions of the WDTX is its default schedule, which Judge Albright has highlighted should beat the PTAB’s competing trial timing.  Consequently, the vast majority of 314(a) discretionary denials at the PTAB involve WDTX cases.  That is, the PTAB has shown deference to the speed and investment of the WDTX when determining if it should exercise discretion to deny an AIA trial petition.

But recently, the PTAB has begun to look more closely at the actual investment the Court is making in cases.  As the Court issues patent decisions at a breakneck pace, the level of analysis and value to the public is now being questioned by the agency.  Meanwhile, others are asserting that the default schedule is increasingly implausible with upward of 20 trials being scheduled for a given date.

As the WDTX docket continues to expand, its limited bandwidth may be its undoing.
Continue Reading WDTX “Implausible Schedule” & Cursory Markman Order Highlighted

Unified Patents Insights Webinar This Thursday

This Thursday April 1st, Unified Patent’s Insight Webinar series (free) will present its April offering at 12PM(EST):

The PTAB and the Western Way: How Judge Albright’s Court and the Board Interact
In the webinar, the panel will  explore the impact of the Western District of Texas on the patent

APA Challenge Strikes a Chord

I’ve read a number of articles over the past few days that argue since the mandamus on Fintiv failed in Mylan Laboratories Ltd. v. Janssen Pharmaceuticals N.V., that this decision somehow forecloses the relief sought in the APA suit against the USPTO — not even close.  The question of appellate jurisdiction over denied institution decisions (or what would amount to a proper mandamus) has absolutely nothing to do with the direct challenges made by the plaintiffs in the pending APA lawsuit.

Indeed, I expect the application of Fintiv to be enjoined within weeks (if not sooner).
Continue Reading PTAB Fintiv Factors Likely to Be Enjoined as APA Violation

First Boardside Chat of the Year

This Thursday the Patent Trial & Appeal Board (PTAB) will offer its first Boardside Chat of 2021, from noon to 1 p.m. (EST).

Several administrative patent judges of the PTAB will cover:

  • Final rules related to institution of trials, including elimination of the presumption at institution that a genuine

Agency Left to Defend Unsettled Legacy

Upon taking the reins at the USPTO, Director Iancu made clear that he believed the Patent Trial & Appeal Board (PTAB) was cancelling too many patent claims in AIA trial proceedings.  Of course the PTAB was simply implementing the statutory framework given to it by Congress – and the Federal Circuit was largely affirming the PTAB’s work. So, the only possible “fix” for the Director was to rebalance the rules/practice to his liking (i.e., in favor of patent owners).

And he changed as much as he could, as fast as he could.
Continue Reading Activist Director Moves On – What’s Next for the PTAB?

New PTAB Roadblocks & Strategies

Earlier this week I laid out my Top 5 PTAB cases of 2020 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like the practitioner list, my Top 5 PTAB developments of 2020 for District Court Litigators will focus on those practical PTAB developments that will impact parallel litigation practices outside of the agency.

In 2020, there were a number developments of interest to litigators, from litigation forums where a PTAB challenge is foreclosed or highly unlikely, to stipulations for avoiding PTAB discretionary denials, and new risks of collateral estoppel across a litigated portfolio.
Continue Reading Top 5 PTAB Developments of 2020 for District Court Litigators

2020: POP Precedents & Director Driven Changes

In 2020, the Board continued to expand 314(a) discretion through numerous Precedential Opinion Panel (POP) decisions. These decisions, among a number of other developments, demonstrated a clear interest on the part of the current Director to rebalance AIA trial proceedings in the direction of patent owners.  At the same time, the agency experienced increasing push back from larger innovator organizations — often subject to frivolous patent litigation— to rein in discretionary practices as it relates to favorite NPE venues. Rule packages attempting to codify 314(a) practices in a manner that would conform with the Administrative Procedure Act (APA) were killed, and lawsuits challenging the agency 314(a) practices were filed.  In the background (as seems to occur every year) a constitutional challenge to the PTAB’s very existence made its way to the SCOTUS.

Another exciting PTAB year in the books. But before closing the books on 2020, here are my Top 5 PTAB decisions/developments that changed the game for PTAB practitioners.
Continue Reading Top 5 PTAB Decisions of 2020

POP to Decide Further Extension of 314(a)?

A year or so back, I discussed a 314(a) dispute at the Patent Trial & Appeal Board (PTAB) where the Board considered a co-pending ITC investigation. In that decision, the Board instituted trial, pointing out that “the ITC does not have the authority to invalidate a patent and ITC decisions do not necessarily pertain to the issues raised in an inter partes review petition.”  More recently the applicability of ITC investigations to a Fintiv factor 314(a) analysis was raised in Garmin International, Inc. v. Koninklijke Philips N.V., (IPR2020-00754).

In Garmin, the Board found that a co-pending ITC investigation favored a denial of institution. The case is noteworthy as in assessing the Fintiv factors, the Board effectively made clear that any petition concurrent with an ITC filing should be denied.

Now the dispute is up for consideration by the Precedential Opinion Panel (POP).
Continue Reading 314(a) To Block All ITC Disputes from PTAB?