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CAFC Again Finds Abuse of Discretion in Denying Stay Pending PTAB Review

Back in July, the CAFC considered an interlocutory appeal from a denial of a motion to stay pending Patent Trial & Appeal Board (PTAB) review in VirtualAgility Inc., v. Salesforce.com Inc., et al. (EDTX). In Virtual Agility, the Court reversed the EDTX’s denial as an abuse of discretion since it seemingly held a “mini-trial” on the merits of the defendant’s CBM petition. Today, in Versata Software Inc., et al. v. Callidus Software (here), the Court considered another interlocutory appeal (unique to the CBM statute) from a decision of Judge Sue L. Robinson of the U.S. District Court for the District of Delaware.  

As in Virtual Agility, the Court side-stepped the question of whether their review should be de novo under the CBM statute by finding the denial was an abuse of discretion. Yet, notably, the Court mentioned its authority to “conduct more searching review of decisions to stay pending CBM review.”

In considering the facts of Versata, the CAFC once again found the district court’s stay analysis wrong as to all of the enumerated factors of the CBM statute. 
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Continue Reading CAFC Again Reverses Denial of Litigation Stay Pending CBM

October Brings 195 AIA Patent Challenge Petitions to PTAB

Post-grant, patent challenge mechanisms of the America Invents Act (AIA) continue to surge in popularity. Inter Partes Review (IPR) and Covered Business Method (CBM) patent challenges have been pouring into the Patent Trial & Appeal Board (PTAB). Last month, the Board received an astounding 195 petitions, surpassing the previous high water mark of 190 set in June of this year.
Continue Reading Record AIA Petitions Filed with PTAB in October

Trial Section Outpaces PTAB Average

As discussed previously, the PTAB is experiencing a filing rate of 150+ AIA trial petitions per month (184 last month alone). This includes petitions for Inter Partes Review (IPR), Post Grant Review (PGR) and Covered Business Method challenges (CBM). The Board’s Trial Section could see between 1800- 2500 petitions this year alone —  if not more as PGR ramps up. Of those filings that reach a final written decision (60% or more) it  is expected that upward of 60+% of those will include a rehearing request of that decision from one side or both. That is, a significant amount of “re-work” on top of the growing AIA trial workload. Given the statutory deadline on the active docket items, which would not apply to rehearing requests of final written decisions (i.e., statutory clock stops at final written decision), these requests may see a much lower Board priority relative to the growing pile of time sensitive matters. In such a scenario, the overall pendency to a final CAFC resolution will be correspondingly extended.

The good news is that …so far…the Trial Section is outpacing historical rehearing pendencies of ex parte prosecution and reexamination appeals.
Continue Reading Impact of Requests for Rehearing on Overall IPR Pendency

Rehearing Requests & CAFC Remands to Tax PTAB Resources

As discussed on Tuesday, sometimes the Court of Appeal for the Federal Circuit (CAFC) will find it necessary to remand an appeal to the Patent Trial & Appeal Board (PTAB). Likewise, sometimes the Solicitor will seek remand in appropriate circumstances. Historically remand occurs in about 10-15% of appeals from the agency on a yearly basis (sometimes less). In any given year this meant only a handful of cases required “re-work” from the PTAB as the number of appeals from the PTAB to the CAFC was relatively modest.

As to requests for rehearing, the Board sees some volume of requests in patent reexamination proceedings, especially inter partes reexamination. Yet, given the lengthy pendency of such reexamination proceedings, a fair amount of these appeals are avoided. Or, are at least not as hotly contested after the the requesting party settles, which was common. 

Thanks to the wildly popular post-grant patent challenge mechanisms of the America Invents Act (AIA), all of that is about to change.

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Continue Reading Backflow To Add to Growing PTAB Workload

Debate Over Issue Joinder Continues

Back in September, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp., (IPR2014-00508) (here). In the Order, a divided panel denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party). The decision was especially surprising given the fact that 315(c) had been previously interpreted by the PTAB as permitting such joinder practices. In fact, one such decision Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 17, Dec. 21, 2012 is published on the PTO web site as a representative order.

Since the decision in Target, rehearing has been requested, and other petitioners have begun to assail the PTAB’s perceived change in course on the matter of issue joinder.
Continue Reading PTAB “Target Practice”

PTAB to Report on State-of-the-Board This Week

The PTAB is holding a two-day, all hands meeting this Tuesday and Wednesday (October 21-22). The PTAB will Webcast for the public the State-of-the-Board Address by Chief Administrative Patent Judge James Donald Smith on Tuesday morning at 10:45 – 11:15 a.m. Webcast information (here)

Roadshow Announced for Detroit Region

The Patent Trial & Appeal Board (PTAB) has announced Detroit Region Roadshows from November 5-19, 2014, focused on the AIA trials. The PTAB will visit Detroit, Chicago, Pittsburgh, Cleveland, Minneapolis, and Milwaukee for half-day, afternoon programs. 

The roadshows are designed to be interactive, including audience participation in an educational game show (which couldn’t possibly be any geekier unless they required everyone to dress in Star Wars costumes) as well as a hands-on workshop.
Continue Reading PTAB Announces Mid-West Roadshow

Follow-On Filings Thwarted by 35 U.S.C. §325(d)

Last Friday, the Patent Trial & Appeal Board (PTAB) designated seven informational decisions. In each decision, the Office denied institution of an inter partes review (IPR) under 35 U.S.C. § 325(d). This statute permits the Director to take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office. The new informative decisions are: 

These decisions demonstrate

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Continue Reading PTAB Cracks Down on Copy Cat AIA Petitions

Expanded Panel at Odds Over Statutory Interpretation of § 315(c)

Yesterday, the Patent Trial & Appeal Board (PTAB) issued a rare expanded panel Order in Target Corp. v. Destination Maternity Corp., (IPR2014-00508) (here). In the Order, a divided panel denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party). The decision is especially surprising given the fact that 315(c) has been interpreted by the PTAB as permitting such joinder practices to date.

The Order is not designated precedential, or even informative — for this reason, it is especially troubling. Such a deeply divided panel of well respected APJs potentially tarnishes the Board’s reputation with the public as a predictable and consistent forum. This is because it may foster the perception that panel assignment may be outcome determinative. Moreover, if the majority view is adopted it could increase litigation gamemanship known to frustrate the ability of patent challengers to effectively utilize the PTAB.
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Continue Reading PTAB Divided Over Practice of Issue Joinder