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Expansion of ITC Domestic Industry Coupled with PTAB Immunity = Greater ITC Appeal

Since Ebay v. MercExchange in 2006, patentees have lamented the practical loss of injunctions in most patent litigation. In the 20 years since, neither the courts nor Congress have shown any interest in revisiting or recalibrating Ebay. Of course, patent infringement complainants before the International Trade Commission (ITC) have always been guaranteed a form of special injunctive relief (exclusion orders), but the ITC’s “domestic industry” jurisdiction has always been construed narrowly by the agency. Given the limited jurisdiction, despite the desirable form of relief, ITC proceedings have been far less common than traditional district court litigation.

Last week, however, the Federal Circuit rejected the ITC’s longstanding and narrow view of domestic industry, potentially opening its doors to a far greater percentage of patentees. Independently, the USPTO’s Patent Trial & Appeal Board (PTAB) also withdrew its Biden-era discretionary guidance last week, which prevented discretionary denials under 314(a) on IPR petitions co-pending with an ITC action. The upshot of these near simultaneous developments is that the ITC is now available to a greater number of patentees, at a time when filing at the ITC may also effectively guarantee immunity from PTAB review.

That is a one-two-punch that no plaintiff-friendly Texas court can rival. Continue Reading Did Injunctions Just Make a Return to U.S. Patent Litigation?

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Vidal Memo Withdrawn

As expected, the USPTO has now rescinded the June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Memorandum) issued by Former Director Vidal. The change is the first in many expected recalibrations of the new administration designed to return practices…

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Boardside Chat Thursday July 18th

Tomorrow, Thursday, July 18, from noon to PM (EST), the USPTO will offer another episode of its “Boardside Chat” webinar series. This month, the webinar will focus on motions practice in America Invents Act (AIA) proceedings before the PTAB. The presentation will include a discussion of various motions that are…

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Failed PTAB Bill Reemerges For a 6th Time

Yesterday, U.S. Senators Chris Coons (D-Del.),Thom Tillis(R-N.C.), Dick Durbin (D-Ill.), and Mazie Hirono (D-Hawaii) introduced the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act (here). Also yesterday, some of the very same senators introduced the Patent Eligibility Restoration Act of 2023. 

The co-introduction of these bills suggests a plan to drive compromise on patent eligibility.Continue Reading New PTAB Bill to Drive 101 Compromise?

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Unnecessarily Ambitious

Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long overdue. While these expected proposals were included in the sprawling Notice, the rule-making process will undoubtedly be bogged down by the remaining collection of controversial ideas and administrative over-reach.

Keep in mind that 314(a) Fintiv practices could soon be struck down as improper circumvention of APA rule-making. Stalling the issuance of those rules for at least another 12-18 months – if not longer – seems like a bad idea. My guess is political pressure from outside the agency led to the laundry list of additional proposals. Especially as they relate to for-profit entities in the wake of the Open Sky debacle.

Regardless, of how or why the expansive ANPRM came to be, I’ll walk through each proposal/idea in detail below (ANPRM here)Continue Reading PTAB Rule Ideas – The Good, The Bad, & The Ugly

Ending Opensky IPR Participation Underwhelming

Back in March, I explained that the Opensky mess needed to be immediately checked by the USPTO. The legitimacy of the PTAB is at stake when when profiteers are actively conspiring to abuse the IPR process by offering to deliberately file papers for an improper purposes. The situation called for swift and decisive correction…..but this is the federal government. So, we waited for a new Director to be appointed, and then, largely unnecessary amicus briefing for such a unique fact pattern.

Six months later (IPR is effectively done except for the Final Written Decision), we finally have a determination out of the Director. But, the outcome is far from satisfying for anyone that is hoping for the PTAB to start policing bad actors akin to an Article III Court.Continue Reading Its Time for the PTAB to Stop Playing Good Cop

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Photo Boards, Unsplash
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

Court Holds Fact Finders May Compare Document Versions

Over the years, the Federal Circuit has faulted the PTAB for overly rigid printed publication analysis.  A recent Federal Circuit decision has provided further guidance on how the PTAB should determine what constitutes prior art in AIA trial proceedings, especially as it relates to the duties of a fact finder.
Continue Reading PTAB Faulted on Rigid Printed Publication Analysis

CAFC Says “No”…Ninth Circuit Says “Yes”

Under 35 U.S.C. § 285, a prevailing party in a patent infringement dispute may be awarded reasonable attorney fees in “exceptional cases.” I’ve previously discussed the contours of what constitutes an “exceptional” case based upon earlier cases. In 2018, the Central District of California awarded attorney’s fees stemming from a parallel PTAB proceeding, and in 2019 a Michigan court held that conduct at the PTAB may even be permissible as being the sole basis for fees in parallel district court proceedings. Most recently, however, based upon the guidance of the Federal Circuit, 285 has not been extended to attorney fees incurred during a PTAB proceeding.
Continue Reading Circuits Split on PTAB Fees Being Recoverable Under 285

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 Fintiv.  Register (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…