314(a)

Subscribe to 314(a) via RSS
Apple Factors Added to NHK Mix

A few weeks back I highlighted the fact that the Patent Trial & Appeal Board (PTAB) was in the process of considering a more nuanced approach to NHK determinations.  That is, with a few Board decisions seemingly denying IPR trial institutions on the sole basis of a competing, and earlier district court trial date, the Board was considering whether its approach had become too rigid.

Today, the Board designated as precedential the supplemental briefing order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020), which lists six factors to be assessed in such scenarios.
Continue Reading PTAB Adds Factors to Assess Import of Competing Trial Date

Additional Briefing Invited on Binary Application of NHK

Last week I pointed out that the litigation timing factor introduced by NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc., has effectively swallowed the entirety of the General Plastic factors in NHK scenarios. That is, in some recent Board decisions, institution has been declined in AIA Trial Proceedings on the sole basis that a district court litigation would reach trial first.  Given the AIA has its own timing mechanism, 35 U.S.C. § 315(b), and plaintiffs seeking to avoid the PTAB need only go to the WDTX (where NPEs tend to go anyway) to leverage this development, this is a troublesome development for the system.

In that same post, I pointed out that a request was made to the Precedential Opinion Panel (POP) to review the Board’s application of NHK (Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393). While that request was denied, the very next day, the panel in Sand Revolution ordered supplemental briefing on this important topic.
Continue Reading PTAB to Take a More Nuanced Approach to NHK Determinations?

PLI Program to Focus on the State of the PTAB

This coming Monday, April 13th, the Practising Law Institute (PLI) will host a one-hour briefing at 3PM(EST) entitled: COVID-19 and PTAB Recalibration — Virtual Trials and Evolving Agency Workflows. (Register here).  I am pleased to once again team with Rob Sterne of…

NHK Swallows General Plastic

The America Invents Act (AIA) was passed into law in 2011 to provide a more cost-effective, faster alternative to district court patent litigation.  At the time, bill sponsors explained that some of America’s largest innovators were paying more to their patent lawyers in a given year — to defend against “patent troll” suits— than they were on new research and development.  The role of the Eastern District of Texas (EDTX) in this perceived problem was not lost on legislators.  Provisions were added to the AIA to address perceived joinder abuses in the EDTX.  And, in many respects, EDTX plaintiff behaviors abruptly transformed the AIA from an esoteric, multi-year legislative debate, into law.

Of course, EDTX remains one of the most popular patent venues in the U.S. despite the AIA, and additional efforts to rein in this venue option in TC Heartland.  More recently, EDTX has inspired a copycat venue in the Western District of Texas (WDTX), which has seen a 700% increase in patent cases since 2016. The expansion in popularity of Texas district courts, especially for non-practicing entities (NPEs), makes the PTAB’s recent deference to such litigation under its NHK precedent all the more troubling given its AIA mandate.
Continue Reading Texas Plaintiffs More Likely to Side-Step PTAB?

Discretionary Consideration Bars ReturnMail Side-Step Via Intervenor

Last fall, I explained that the Patent Trial & Appeal Board (PTAB) was considering the relationship of government contractors in Court of Federal Claim (COFC) patent disputes against the U.S. government.  That is, given the typical existence of a contract between the government and the contractor, what such a relationship meant for RPI/privy determinations.

Perhaps not surprisingly, the PTAB has found privity to exist between the government and its contractors in common contractual scenarios. For example, where the contractor intervenes in the COFC matter. And that the later AIA petition of the contractor (outside the 315(b) window of the government) is barred.

Perhaps more surprisingly, however, is the discretionary consideration under 314(a) relative to ReturnMail that would effectively close the PTAB to patent disputes at the COFC.
Continue Reading PTAB Closed to Court of Federal Claims Matters?

PTAB 2019: A Year of New Precedent

There were a number of high profile developments at the Patent Trial & Appeal Board (PTAB) in 2019. New procedures for amending claims, Practice Guide updates to thwart parallel petition filings, a successful constitutional challenge based on the Appointments Clause, and another SCOTUS review of the PTAB appeal bar.  But, not all of these developments impact the day-to-day life of PTAB practitioners.  Of greater interest to PTAB practitioners are the developments that change the game for the average AIA trial, with this in mind, below are my Top 5 PTAB Practitioner Developments of 2019.
Continue Reading Top 5 PTAB Decisions of 2019 for PTAB Practitioners

Indemnification “Significant and Meaningful Relationship”

Extending a trend started last spring, the PTAB is looking more closely at AIA trial petitions coming from separate parties.  For parties seeking to pursue an AIA trial proceeding, this trend should give pause to those considering participation in Joint Defense Groups, or linked to another petitioner by business arrangement or indemnification obligation.

Last week, in PayPal Inc. v. Ioengine LLC, the Board explained that a customer/supplier relationship, together with indemnification obligation is enough to be considered a “same petitioner” in a General Plastic analysis.
Continue Reading PTAB Focuses on Customer/Supplier Relationship in 314(a) Denial

New Decisions Provide Guidance on Discretionary Denials

The Patent Trial & Appeal Board (PTAB) has been steadily rolling out new precedent since establishing it Precedential Opinion Panel (POP). Last Friday a few more decisions were added to the growing pile. The newest decisions: two precedential and one informative serve to clarify 325(d) and 314(a) considerations, while the third informative decision warns against excessive and voluminous prior art presentations.
Continue Reading PTAB Continues to Roll Out Precedent

Redundant Grounds Not An Efficient Administration of Justice

Last month, the Patent Trial & Appeal Board (PTAB) issued an Order explaining that maintaining multiple, concurrent proceedings per patent presents a significant burden for the Board.  More specifically, where the same claims are challenged across multiple, redundant petitions (i.e., pile-on), the Board pointed out that instituting trial across all redundant filings may undermine the Office’s ability to complete proceedings in a timely manner and places an unfair burden on the Patent Owner. 35 U.S.C. § 314(a).

That petition filer, which has filed numerous redundant petitions across a large patent portfolio, is now seeing the first of its redundant petitions being denied.Continue Reading PTAB Begins to Deny Pile-On Petitions from Same Petitioner

PTAB Cements Institutional Discretion

Back in January, I identified the Board’s expanding view of 314(a) discretion as the most significant development of 2018. In that earlier post, I predicted that one such 314(a)/325(d) case, NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., would be designated precedential in 2019.

Yesterday, the PTAB delivered on my prediction.
Continue Reading New PTAB Precedent: 314(a) Not Just for Follow-On Petitions