Concurrent Proceedings

Senators Excoriate Perceived WDTX Venue Abuses

Back in September, I previewed the PTAB reform discussions that eventually issued as the Restoring the America Invents Act.  The Act, clearly a rebuke of the Iancu administration’s changes to AIA trial practices, also included a provision encouraging district court stays in view of PTAB challenges. The unspoken concern behind the stay provision is the growth of patent litigation in the WDTX . If there was any doubt about that rationale, the Senate Judiciary has just explicitly put WDTX’s Judge Albright directly in its cross-hairs.
Continue Reading Senate Judiciary Characterizes WDTX Practices as Unseemly & Inappropriate

Abusive Reexam Relief

Late last month, in In re Vivint, Inc., the Federal Circuit tackled the question of whether a post-issuance review proceeding (in this case, ex parte reexamination (“EPR”)) was available to a challenger that repeatedly filed another post-issuance review proceeding (in this case, inter partes review (“IPR”)) to forward the very same argument. The court held that, while the EPR request had shown substantial new questions of patentability, “the Patent Office abused its discretion and acted arbitrarily and capriciously under § 325(d).” As such the court vacated the decision and remanded to the Patent Office (“PTO”) with instructions to dismiss.

But, don’t expect this decision to be much more than a corner case.
Continue Reading Reexam After Failed IPR?

Do Private Arbitration Agreements Undermine Public Policy?

With Congress considering “encouraging” stays of patent litigation pending concurrent PTAB review, licensors may begin to look to contractual  mechanisms to avoid a PTAB filing altogether.  The strategy is not unprecedented, and may provide a way for district courts to enjoin the agency from moving forward with AIA trials.

But, should private agreements thwart mechanisms designed to remove improvidently granted patent monopolies?
Continue Reading Avoiding the PTAB by Private Agreement?

October Webinar to Debrief on Leahy Bill

Senator Patrick Leahy (D) VT and Senator John Cornyn (R) TX have jointly drafted a new bill entitled the “Restoring the America Invents Act.” The Bill proposes to roll-back recent directives and policies of former USPTO Director Iancu, most notably discretionary denials of AIA trial proceedings in view

Bill Released – Iancu Era Rebuked

Well, the wait was not that long after all.  Senator Leahy -VT (D) (with co-sponsor Senator Cornyn – Tx (R)) has today released the draft bill entitled “Restoring the America Invents Act.”  The bill includes most of what I expected, with a handful of additional tweaks.

Below is a brief overview of all of the proposed changes.
Continue Reading Restoring the America Invents Act – What You Need to Know

CAFC Cautions Against IPR Stay Considerations in Venue Dispute

A mandamus is considered an extraordinary remedy — especially in the venue context where district courts are accorded broad discretion.  Nevertheless, where a motion to transfer presents an indisputable right, mandamus is proper. Recently, the Federal Circuit has been uncharacteristically outspoken that the WDTX is doing it wrong.

The most recent WDTX mandamus on this issue, while unsuccessful, found the Federal Circuit once again pointing out improper analysis.
Continue Reading Judge Albright Faulted for Considering IPR Stay Likelihood in NDCA

What is “Materially Identical?”

The doctrine of issue preclusion can prevent an issue previously litigated at the PTAB from being re-litigated in a later proceeding, such as in the district court. In order for issue preclusion to apply, a “materially identical” issue must have been “actually litigated and determined by a valid and final judgment,” where the determination was “essential to the judgment.” See Papst Licensing GMBH & Co. KG v. Samsung Elecs. Am., Inc., 924 F.3d 1243, 1252 (Fed. Cir. 2019). Thus, once appeals have been exhausted, the determinations in a FWD from the PTAB may have preclusive effect in future actions, even on related patents so long as they raise “materially identical” issues.

Which begs the question: What is the scope of materially identical?
Continue Reading PTAB Decisions & Issue Preclusion

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

Pursuing Different Constructions Before the PTAB & Court?

Since the PTAB started applying the Philips standard for claim construction, petitioners have put a lot more thought into their proposed claim constructions. This is because it is no longer possible to point to the PTAB’s use of the broadest reasonable interpretation (BRI) as the basis for a different construction.

Now, petitioners are very careful to be consistent with disputed terms.  But, what happens if a petitioner argues for a broader construction at the PTAB, then argues for a more narrowed construction in the district court?
Continue Reading Keeping Your PTAB Story Straight

Are Two Heads Better than One?

When faced with parallel PTAB and District Court/ITC proceedings, both patent owners and petitioners alike must decide whether to use the same expert in each proceeding, or hire a dedicated expert for each. Certainly there is much efficiency to be gained using the same person — not to mention the seeming likelihood of greater consistency in opinion.

But it is preferable, in my view, to use separate experts. This often limits document inventory for the PTAB deposition, and opposing counsel is less inclined to extend the deposition with questions that are designed to illicit fodder for the litigation effort. Likewise, use of separate experts does not give litigation counsel extra “shots” at the same witness.  Also, with the PTAB now applying the same Philips claim construction of the district court, as discussed previously, there is also an increased interest in claim construction related testimony should the PTAB proceeding fail.

Recently, the District of Delaware considered whether a litigation expert should have to divulge any consulting (non-testifying) work with respect to an earlier PTAB proceeding.

Continue Reading Using the Same Expert at the PTAB & District Court?