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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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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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ANPRNM Comments Due Today

Today is the comment deadline on the USPTO’s recent Advanced Notice of Proposed Rulemaking (ANPRM). To date some 10,000 comments have been submitted.

At first blush the volume may seem impressive. Turns out, however, that the overwhelming majority of comments appear to be from random individuals spamming the agency with automated form submissions. These submissions do not even address the specific proposals of the ANPRM and offer little background, insight, or analysis other than a paragraph or two of “PTAB bad.” Others in the same spam bucket offer an identical rule proposal — to make the PTAB an opt-in system. Of course, the agency has no power to overrule a statute with a conflicting regulation to allow for opt-in.

Once the agency navigates through less than helpful dross, we can expect an NPRM in the fall responding to the actual ANPRM comments. My guess would be after the close of FY 2023 in early/mid October.

But, what will the actual NPRM look like? Certainly nothing like the ANPRM.Continue Reading PTAB ANPRM Comments & Spoilers

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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

Reasonably Could Have Investigated in PGR?

Last month the Federal Circuit recalibrated the scope of IPR estoppel by overruling Shaw Industries. That is, after the SCOTUS decision in SAS Institute, the Court concluded that IPR “raised or reasonably could have raised” estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all claims and grounds not in the IPR but which reasonably could have been included in the petition.

As to “reasonably could have been raised,” this assessment  considers what information was known to the filer, and when, or, what might have been uncovered via a reasonably diligent search.  In the case of a PGR proceeding — allowing a broader range of validity challenge types relative to IPR — this “reasonably could have raised” estoppel footprint poses a significant risk to patent challengers.
Continue Reading PGR’s Scary Estoppel Footprint

Virtual CLE Program January 24 – 27th

IPWatchdog’s PTAB Masters 2022 (PTAB-palooza if you prefer), is coming next week!

The free, 4-day CLE program is virtual, and will focus on the PTAB from the viewpoint of both the patent owner and petitioners challenging patents.  Topics will explore political and legislative developments impacting the agency in…

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…

POP to Decide Further Extension of 314(a)?

A year or so back, I discussed a 314(a) dispute at the Patent Trial & Appeal Board (PTAB) where the Board considered a co-pending ITC investigation. In that decision, the Board instituted trial, pointing out that “the ITC does not have the authority to invalidate a patent and ITC decisions do not necessarily pertain to the issues raised in an inter partes review petition.”  More recently the applicability of ITC investigations to a Fintiv factor 314(a) analysis was raised in Garmin International, Inc. v. Koninklijke Philips N.V., (IPR2020-00754).

In Garmin, the Board found that a co-pending ITC investigation favored a denial of institution. The case is noteworthy as in assessing the Fintiv factors, the Board effectively made clear that any petition concurrent with an ITC filing should be denied.

Now the dispute is up for consideration by the Precedential Opinion Panel (POP).
Continue Reading 314(a) To Block All ITC Disputes from PTAB?

Commission Awaits PTAB Result – Sometimes

Under Section 337 of the Tariff Act of 1930, the International Trade Commission (ITC) is required to conclude its investigations and make determinations “at the earliest practicable time.” 19 U.S.C. § 1337(b)(1). This mandate for speed in ITC proceedings drives the Commission forward despite parallel Patent Trial & Appeal Board (PTAB) proceedings. The fact that the ITC, unlike district courts, cannot award monetary relief only contributes further to the Commission’s aversion to stays pending PTAB review.

Increasingly, however, PTAB proceedings concluding prior to enforcement, are catching the eye of the Commission. In such scenarios, an adverse PTAB ruling against a subject patent can result in a suspension of enforcement.Continue Reading PTAB Speed vs. ITC Speed

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?