Patent Litigation

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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

Unpacking the Importance of the Claimed Invention from Other Commercial Components

Objective indicia of non-obviousness, such as commercial success and industry praise, can be probative evidence of non-obviousness. In order for the objective evidence of secondary considerations to be afforded substantial weight, however, the patentee must establish a nexus between the evidence and the merits of the claimed invention.  A presumption of nexus can be established if the patentee shows that the evidence is tied to a specific product that embodies the claimed invention.

Of course, the challenger can rebut the presumption of nexus by showing that the commercial success or industry praise is due to features other than the claimed invention. But, this rebuttal may not be so straightforward where the claimed invention is a tool of a multi-tool package.  In this instance, the inventive component must be weighed, regardless of the popularity/success of other components. 
Continue Reading PTAB Faulted on Objective Indicia Analysis

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

FWD Statutory Estoppel vs. Collateral Estoppel

In designing the America Invents Act (AIA), statutory estoppel of 35 U.S.C. § 315(e)(2) was set to by legislators to attach at the time of the PTAB’s Final Written Decision (FWD).  This is despite the fact that further appeals are routine.  This statutory design was responsive to the previous criticism of inter partes reexamination estoppel, which attached only after all appeals were exhausted.

Yet, this statutory design often puts district courts in the unenviable position of treating an otherwise non-final decision, as final……at least with respect to petitioner estoppel.  As to claims that may be cancelled in the same FWD, courts are free to await further appeals.

This unbalanced scenario can be exploited by Patent Owners.
Continue Reading Patent Owner Uses FWD Cancelling Claims as a Sword & Shield

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…

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

WDTX Losing its PTAB Mojo – Fintiv Outdated?

The Federal District for the Western District of Texas (WDTX) is a hotbed of patent litigation. Since 2016, the case load has increased some 700%, with a single federal judge (Hon. Alan Albright) now presiding over 20% of the nation’s patent litigation docket.  One of the primary attractions of the WDTX is its default schedule, which Judge Albright has highlighted should beat the PTAB’s competing trial timing.  Consequently, the vast majority of 314(a) discretionary denials at the PTAB involve WDTX cases.  That is, the PTAB has shown deference to the speed and investment of the WDTX when determining if it should exercise discretion to deny an AIA trial petition.

But recently, the PTAB has begun to look more closely at the actual investment the Court is making in cases.  As the Court issues patent decisions at a breakneck pace, the level of analysis and value to the public is now being questioned by the agency.  Meanwhile, others are asserting that the default schedule is increasingly implausible with upward of 20 trials being scheduled for a given date.

As the WDTX docket continues to expand, its limited bandwidth may be its undoing.
Continue Reading WDTX “Implausible Schedule” & Cursory Markman Order Highlighted

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?

Frequent Losing Argument at the PTAB Finds Rare Exception

A common losing argument at the PTAB is that a reference used in an obviousness combination is non-enabling.  The reason this argument fails is that a reference is prior art for all that it teaches.  But even this proposition has its exceptions.  For example, one would not expect a Dick Tracy comic from the 1930s showing a communicating wristwatch to somehow preclude patents on today’s smartwatches.

But where is the line drawn as to aspirational disclosures and, fair, prior art teachings?Continue Reading Aspirational Prior Art Disclosures & Enablement

Free Program Spans April 19-22nd

For those seeking some PTAB-related CLE programming this spring, look no further than IPWatchdog.  The inaugural PTAB Masters™ program, will be presented by IPWatchdog® next week, April 19-22nd. Each day the webinar will provide a different PTAB related topic.  Tune in each day for 2-3 hours of interactive content.…