Concurrent Proceedings

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Expert Agency Shown Deference in Matters of Claim Scope

While IPR petitioners may only challenge patent claims based upon patents and printed publications (§§ 102 and 103), the PTAB trial record can be leveraged in parallel district court proceedings on related issues.  For example, PTAB fact findings on claim construction have been adopted by district courts on motions for summary judgment. And recently, a plaintiff in the District of Utah leveraged a PTAB finding to obtain a favorable outcome regarding indefiniteness on summary judgment.
Continue Reading Leveraging PTAB Records in District Court

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

Rehearing Cites Lack of Countervailing Public Policy Against PTAB Review

Last month the Federal Circuit decided Dodocase VR, Inc. v. Merchsource, LLC (here). In Dodocase the Federal Circuit held that a standard forum selection clause can divest the PTAB of AIA trial jurisdiction.

If maintained, the ability to avoid the Patent Trial & Appeal Board (PTAB) by private agreement would prove a game changer in periodic licensing agreements between competitors, including SEP licensors.

But, earlier this week, en banc rehearing was sought.
Continue Reading CAFC Urged to Rehear PTAB Forum Selection Dispute

General Plastic Factors & Follow-on Petitions

Last September, the Patent Trial & Appeal Board (PTAB) held that the advanced state of a district court proceeding militated in favor of denying a petition for IPR in accordance with the General Plastic factors (NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc). Given this holding, Patent Owners may now consider speedier forums, such as the International Trade Commission (ITC) as providing incremental protection from a PTAB challenge.

Last week, the Board clarified that consideration of late stage parallel proceedings is done only in the context of assessing discretionary institution of “follow-on” petitions under 35 U.S.C. § 314(a).  In doing so, the Board also highlighted that an advancing ITC action (even in a follow-on petition scenario) may be of a lesser concern than a district court proceeding given its unique nature.
Continue Reading Co-Pending ITC Action Less of an Equitable Concern for PTAB?

PTAB Success a Relevant Consideration Under 35 U.S.C. § 285

After Octane Fitness, district courts “may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances,” looking at substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated.

As one recent decision makes clear, not only can a successful PTAB trial aid a litigation fee dispute, but the PTAB fees themselves may be recoverable.
Continue Reading Leveraging Your PTAB Record to Secure Attorney Fees in District Court

Even Preliminary Proceeding Arguments Notice the Public

It is well-established that statements made by a Patent Owner during an inter partes review (IPR) can constitute prosecution disclaimer— even in papers filed by a Patent Owner before the trial. Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017)

As a reminder, prosecution disclaimer prevents a patentee that clearly and unmistakably disclaimed a certain meaning for its patent claims during prosecution from recapturing this same meaning during claim construction in a subsequent litigation. As was the case in Aylus, Patent Owners are learning that the timing of such a disclaimer, or lack of express adoption by the Patent Trial & Appeal Board (PTAB), is of no moment.
Continue Reading Beware Prosecution History in PTAB Trials

Assignor Estoppel Precluded by AIA Statutes…But What of Other Equitable Defenses?

The doctrine of assignor estoppel bars the assignor of a patent from challenging the validity of the patent after it is assigned. In considering this defense to an AIA trial proceeding, the Patent Trial & Appeal Board (PTAB) had consistently held that this common-law doctrine is subject to abrogation by statute, and that the AIA statutes do exactly that. The Federal Circuit recently agreed.

However, the Board has considered and applied other equitable defenses. For example, the Board has applied waiver (prior to the Federal Circuit’s determination that tribal immunity did not apply to the PTAB). Thus, equitable defenses that do not conflict with the AIA statutes may be leveraged.

One equitable defense that could become more prominent going forward —given the alignment of claim construction standards between the PTAB and courts— is judicial estoppel.Continue Reading Equitable Defenses at the PTAB

New Director’s Interest in Predictability To Drive PTAB Change

As pointed out yesterday over at IPWatchdog, the USPTO Solicitor has withdrawn as Intervenor in the Federal Circuit appeal between Telebrands Corporation and Tinnus Enterprises (stemming from PGR2015-00018, challenging a patent pertaining to the well-known Bunch-o-Balloons® product on indefiniteness grounds). The USPTO intervened in the earlier appeal to defend the indefiniteness standard applied in the PGR. This is because the applied standard was stricter than that enunciated in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). The application of a different, stricter standard caught some by surprise that had not realized that the Federal Circuit endorsed that very standard for agency proceedings in In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).

I pointed out at the time of this appeal that the Packard indefiniteness standard is grounded in ex parte examination policies and practices.  As such, it was unclear whether the Court’s holding in Packard could be properly extended to AIA trial proceedings. Yet, the Solicitor’s decision to withdraw as Intervenor in the Tinnus dispute is not a sign that the agency lacks faith in its brief. Rather, the change is indicative of a new direction for PTAB trial proceedings.
Continue Reading PTAB Likely to Adopt a Philips Construction for AIA Trials in 2018

Federal Circuit to Consider PTAB Sovereign Immunity Defense

State-affiliated entities enjoy immunity from suit in federal courts under the 11th amendment. To date, a handful of such entities have successfully leveraged the same immunity theory to avoid review of their patents before the Patent Trial & Appeal Board (PTAB). While still other Patent Owners have aligned themselves with Native American Tribes in an effort to benefit from their sovereign status in the hopes of avoiding PTAB review.

More recently, in Ericsson v. Regents of the University of Minnesota.the PTAB has determined that sovereign immunity is waived where the sovereign entity files an infringement suit. (here)

Appeal was taken from this decision this week.
Continue Reading PTAB Sovereign Immunity Dispute Heads to CAFC

February Webinar to Explore Litigation Strategies & PTAB Antidotes

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday, February 22nd @ 2PM (EST). The February Webinar is entitled: Roadblock PTAB: Litigation Strategies & IPR Antidotes.

Register (here)

Program Description: In the 5+ years since their inception,…