314(a)

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Abusive Petition Practices Effectively Controlled by PTAB

Once upon a time, the Patent Trial & Appeal Board (PTAB) accepted AIA trial petitions that attacked a subject patent in a serial fashion.  That is, typically, a group of defendants of a multi-defendant suit  would stagger their filings against a subject patent. For example, Company A would file first, after seeing the Patent Owner’s Preliminary Response to Company A, Company B would file, and then after the Board issued its Decision to Institute relative to Company A’s petition, Company C would file.  In this way, each succeeding petition could improve over the first filed petition and increase the likelihood that the patent would be cancelled. This was not fair, and to the agency’s credit, once this strategy became clear, it was shut down.

With the issuance of the General Plastics decision, as any practitioner would attest, a serial petition strategy has become near impossible.  But that hasn’t stopped PTAB critics from claiming the practice somehow still exists.
Continue Reading PTAB Debunks Multiple Petition Criticisms in Newly Released Statistics

Simple Agency Fix Would Cure Optics Problem

In another week, the USPTO will close comments on its recently issued Request for Comments (RFC). As previously discussed, the RFC seeks public input on its discretionary practices under 314(a), including  serial and parallel petition practices, and what if anything the PTAB should do to refine its approaches.

When it comes to parallel petitions, the PTAB could easily eliminate upward of 80-90% of these filings with a simple tweak to its procedures.
Continue Reading The Vast Majority of Parallel PTAB Petitions Are Easily Eliminated

CAFC Side Steps 314(a) Controversy on Procedural Grounds

As detailed back in September, there were separate attacks launched against the PTAB’s practice of denying AIA trial petitions in favor of advancing district court trial dockets. The first was a mandamus petition filed with the Federal Circuit challenging a particular IPR denial, the second an APA action filed by a number of large tech companies challenging the agency’s Fintiv practice as being in excess of its jurisdiction.

Last week, the Federal Circuit denied the mandamus, finding the matter barred from appeal in a straightforward opinion.
Continue Reading Challenge to Fintiv Fails on Mandamus

Agency to Consider Further Public Comment

Over the past few months, Congress has been asked to investigate the Patent Trial & Appeal Board’s (PTAB) practice of denying AIA trial petitions in view of competing litigations. On top of that, the agency has been sued for applying these allegedly unlawful practices, and there is a mandamus pending on the same issues at the Federal Circuit.

In parallel, the agency had been pursuing a draft rule set to codify many of these controversial practices….a swan song of sorts for the outgoing Director. This effort has been closely scrutinized by White House Office of Information & Regulatory Affairs (OIRA) at the behest of many stakeholders.  Given the public outcry, ongoing litigation, and feedback to White House Office of Information & Regulatory Affairs (OIRA), the agency has now taken a step back to seek further public comment on its planned rule changes.

Today the Dept of Commerce issues a Request for Comments from the public on these issues. But, responses are due within a month – What’s the rush?
Continue Reading White House Pushes Back on PTAB Rule Making Effort

APA Action & Mandamus Petition Simultaneously Challenge PTAB’s NHK/Fintiv Framework

Back in June, I predicted that an APA action against the USPTO and/or a mandamus petition to the Federal Circuit was inevitable given the PTAB’s practice of denying IPR petitions in favor of competing district court trial dates. Well…here we are.

Yesterday,  Director Iancu was sued by a group of large tech companies for allegedly violating the APA by denying IPR petitions on the basis of a competing trial date, and late last week, one of the same companies also filed a mandamus petition seeking to force the agency to consider the merits of a petition denied as a matter of discretion even though it was filed some seven months before the 315(b) deadline.

Never a dull moment at the PTAB.
Continue Reading USPTO Sued Over Discretionary Denials

Delaware Cases Slipping 4-6 Months

The practice of denying AIA trial petitions in view of competing district court trial dates has brought some negative attention to the Patent Trial & Appeal Board (PTAB) over the past few months. At the same time, patent litigation has increased over the first two quarters of the year by 20%.  This surge has been greatly aided by the exploding popularity of the Western District of Texas (WDTX) with non-practicing entities — a district that the PTAB is increasingly deferring to in its discretionary denials based upon competing trial dates.

While Patent Owners are quick to point to a looming district court trial date as being set in stone, in reality, these dates are often reset once the PTAB hurdle is cleared.
Continue Reading District Court Trial Dates Tend to Slip After PTAB Discretionary Denials

New Informative Decisions Applying Fintiv Factors

Today, the Patent Trial & Appeal Bord designated two decisions informative that apply the so-called “Fintiv factors.”

Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 15 (May 13, 2020) (informative)

This decision denies institution upon applying the factors set forth in the precedential Order of the same dispute,  Apple…

House and Senate Judiciary Committees Alerted to “Significant and Rapidly Growing Problem”

Earlier this month, a coalition of stakeholder organizations sent letters to the House and Senate Judiciary Committees seeking an investigation into the Patent Trial & Appeal Board’s (PTAB) application of discretion under 35 U.S.C. § 314(a).  More particularly, the organizations argue that the Board’s application of NHK Spring is “choking off access” to the PTAB and leading to a resurgence in patent litigation of questionable merit. The organizations ask that the USPTO report to Congress on these practices, and engage in formal rulemaking to guide agency practices.

Whether the requested action is provided or not, the continued application of 314(a) in the NHK context seems destined to end.
Continue Reading Congress Urged to Investigate PTAB Discretionary Denials

Board Acknowledges Slipping WDTX Trial Date

Some weeks back I highlighted the institution decision in Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393), which held that despite most General Plastic Factors favoring institution, the majority felt as though a looming WDTX trial date trumped all other GP factors and denied institution.  After petitioner’s unsuccessful request for a Precedential Opinion Panel (POP) hearing, the Board ordered additional briefing.

Today, the Board reversed course instituting the Sand Revolution IPR.  In the process, the Board provided some insight into slipping WDTX trial dates and steps petitioners can take to help avoid discretionary denials of parallel AIA trial petitions.
Continue Reading PTAB Reverses Discretionary Denial Based on WDTX Trial

NPRM to Codify Existing Practices with Notable Exception

The United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking today to update its rules to conform to SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).  That is, the rules now follow the holding of SAS to institute an AIA trial proceeding on all challenged claims should the petitioner meet its burden for at least one challenged claim.  Additional include other rule based updates to codify practices introduced by changes to the Trial Practice Guide, such as providing for sur-replies to principal briefs and providing that a patent owner response and reply may respond to a decision on institution.

None of the above rules change existing practices, but the USPTO did offer one notable wrinkle in its Federal Register Notice.
Continue Reading PTAB Proposes New Rule Package – and New Preliminary Proceeding Philosophy