Patent Trial & Appeal Board

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Court Takes Offense to Tactics Geared to PTAB Alone

Litigants beware; Judge Rodney Gilstrap (E.D. Texas) warned litigants considered to be using the district court proceedings to posture positions in co-pending CBM proceedings that ‘[t]he Court does not countenance—in fact this Court is offended by—the strategic use of an Article III Court to gain a tactical advantage in any parallel proceeding.”

But, this dispute may be a preview of things to come as the Patent Trial & Appeal Board (PTAB) aligns itself with the Phillips construction of the courts.Continue Reading Judge Gilstrap Cautions on Tactics Directed Solely to PTAB Interests

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?

New Presentation of Same IPR Art Thwarted by Estoppel

Post SAS, there are fewer exceptions to IPR estoppel. Indeed, the absence of partial institutions has led to many courts finding the “reasonably could have raised” aspect of IPR estoppel to be broader than just the art of the ultimate Patent Trial & Appeal Board (PTAB) trial. As such, unsuccessful petitioners are now exploring alternative theories.

In The California Institute of Technology v. Broadcom Limited, et al., (here) the Central District of California found that IPR estoppel applies where the same IPR reference is later raised under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a), rather than as a “patent or printed publication” as in the IPR.
Continue Reading IPR Art Simultaneously Qualifying as Known or Used Subject to Estoppel

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

PTAB 2018: A Year of Agency Recalibration

The Patent Trial & Appeal Board (PTAB) stole much of the 2018 patent law spotlight. From landmark Supreme Court decisions such as Oil States and SAS Institute, to significant en banc Federal Circuit decisions in WiFi-One, PTAB practice evolved more in 2018 than in any prior year. That said, the most impactful 2018 changes for practitioners were driven by the agency.

Under the pro-patent leadership of Director Iancu, the agency is expected to drive still further change in 2019.
Continue Reading Top 5 PTAB Practice Developments of 2018

Boardside Chat & Special PLI Briefing

For those seeking Patent Trial & Appeal Board (PTAB) related CLE/programming this month, the PTAB itself is hosting a Boardside Chat webinar this Thursday, Dec. 6th from noon to 1 p.m. ET.

The topic of the webinar is hearsay and authentication before the Board. Lead Judge Michael Zecher along…

Efficiency Considerations Determined at the Time of Institution

Since the unraveling of partial institution practices in SAS Institute, stakeholders have speculated that the Patent Trial & Appeal Board may begin denying petitions that present administrative inefficiencies. For example, where a petition attacking 30 claims is assessed as failing to meet the threshold standard for 29 of the 30 claims, the Board may exercise its discretion to deny the petition in the interest of efficiency.

Such a situation was recently presented in Chevron Oronite Company LLC v. Infineum USA L.P. (here).
Continue Reading Leveraging SAS Leftovers to Avoid PTAB Institution

Director’s Precedent Setting Power Likely to Unravel Issue Joinder?

Four years ago, a divided panel of the Patent Trial & Appeal Board (PTAB) denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of a same petitioning party) in Target Corp. v. Destination Maternity Corp., (IPR2014-00508). The decision was remarkable at the time, given that 315(c) had been previously interpreted under multiple PTAB decisions as permitting such joinder practices. In fact, one such decision, Microsoft Corp. v. Proxyconn, Inc., IPR2012-00026, Paper 17, Dec. 21, 2012, had even been published as a representative order on the PTO web site.

Target filed a request for rehearing challenging the decision.  In its Decision on Rehearing the PTAB expanded the panel reversed its original decision, granting Target’s petition for joinder and finding 315(c) to permit issue joinder. This decision became notorious thereafter as an example of the Board’s “panel stacking” to reach a desired outcome.  (At the time I explained this was more a function of the difficulty in designating decisions precedential rather than any nefarious design against Patent Owners, that is, the PTAB needed to pick a direction by brute force where conflicting decisions prevented a consensus vote of the Board)

More recently the USPTO has welcomed a new pro-patent Director that has made clear he believes the PTAB could use some pro-patent recalibration.  Recently, the agency has given the new Director the ability to make precedent virtually on his own. Based on a decision last week, it may be that the Director could unravel the Board’s chosen path on issue joinder to the delight of patent owners.
Continue Reading Director Iancu to Unravel Panel Stacking Decision?

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