314(a)

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Simultaneous/Redundant Petitions Attacking Same Claims Questioned

The Patent Trial & Appeal Board’s (PTAB) new focus on institution equities of serial petition challenges was the most significant development of 2018. Since that time the Board has expanded its equitable focus beyond follow-on petitions and similarly situated defendants to consider parallel litigation timing.

This week, the Board tackled a new consideration. That is, whether it makes sense from a fairness perspective to give an IPR petitioner 5 bites at the same apple. I have been expecting this one.
Continue Reading PTAB Pushes Back on Redundant Filings of Same Petitioner

Director Encouraged to Do What He is Already Doing?

At several bar events over the past few weeks, the Director has made clear that the agency is “looking into” ways to address certain serial petitioning practices beyond that of the “follow-on” scenario. For example, where multiple petitions are filed at the same time for the sole purpose of multiplying the number of grounds for an AIA trial proceeding.

This past Tuesday, the Senate Judiciary Committee sent a letter to Director Iancu seemingly asking him to do what he is already doing.  And for him to respond to proposed directives (transparently presented in the form of questions) on accomplishing such.
Continue Reading Senate Provides Directives to USPTO to Attack Serial PTAB Filings

Close Trial Date to Doom Parallel IPR Petitions?

Last September, the Patent Trial & Appeal Board (PTAB) found the advanced stage of a parallel district court proceeding weighed in favor of denying a follow-on, IPR petition. NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc. That is, when weighing the equities of a follow-on petition under General Plastic, the competing litigation’s scheduled conclusion before the end of any potentially instituted IPR favored a discretionary denial of the petition under 35 U.S.C. § 314(a).

Since that time, the existence of late stage litigation proceedings has been raised in the context of first-filed petitions, and is beginning to gain traction there as well.
Continue Reading PTAB Equitable Analysis Extends Beyond Follow-on Petitions

PTAB 2018: A Year of Agency Recalibration

The Patent Trial & Appeal Board (PTAB) stole much of the 2018 patent law spotlight. From landmark Supreme Court decisions such as Oil States and SAS Institute, to significant en banc Federal Circuit decisions in WiFi-One, PTAB practice evolved more in 2018 than in any prior year. That said, the most impactful 2018 changes for practitioners were driven by the agency.

Under the pro-patent leadership of Director Iancu, the agency is expected to drive still further change in 2019.
Continue Reading Top 5 PTAB Practice Developments of 2018

Efficiency Considerations Determined at the Time of Institution

Since the unraveling of partial institution practices in SAS Institute, stakeholders have speculated that the Patent Trial & Appeal Board may begin denying petitions that present administrative inefficiencies. For example, where a petition attacking 30 claims is assessed as failing to meet the threshold standard for 29 of the 30 claims, the Board may exercise its discretion to deny the petition in the interest of efficiency.

Such a situation was recently presented in Chevron Oronite Company LLC v. Infineum USA L.P. (here).
Continue Reading Leveraging SAS Leftovers to Avoid PTAB Institution

Stage of Litigation & Similarly Situated Litigants Now General Plastic Factors?

As I have mentioned on a few CLE panels as of late, the recent changes to the Patent Trial & Appeal Board’s (PTAB) Trial Practice Guide invite parties to suggest additional General Plastic factors.  These factors are applied by the Board to determine whether to exercise its discretion to deny institution under § 314(a) in applicable cases.  With the efficacy of 325(d) now muted after SAS (given it’s ground-by-ground based application), the potential “kill shot” offered by 314(a) has attracted more attention in recent Patent Owner Preliminary Responses.

With the new Trial Guide update barely a month old, the Board has already begun to expand its General Plastic factors. Two September decisions highlight the degree to which the Board may be more open to considering parallel litigation dynamics as additional factors.
Continue Reading PTAB Expands Equitable Considerations to Deny AIA Trial Petitions