In-Person Hearing are Back

This Thursday (Noon – 1PM(EST)), the next Patent Trial and Appeal Board (PTAB) Boardside Chat webinar will be conducted to discuss plans to re-establish in-person PTAB hearings and tips from judges for successfully arguing in different environments (connect here)

Topics and speakers for this event include:

  • In-person options for

About Face Responsive to Mandamus Filing

I’ve pointed out a few times now that the IPR filings of OpenSky are inevitably doomed. There is just too much evidence of bad faith for there to be any other outcome. And as I also pointed, out the POP request has been pending since January, presumably awaiting the new Director to settle the issue. Today the POP Request was finally denied, strangely, in favor of a Director Review.

I know what you are thinking. “Wait a minute, there is Director Review of institution decisions? Since when!?”

Since a mandamus petition sent the agency scrambling to fix this constitutional infirmity.

Continue Reading Director Review Now Possible For PTAB Institution Decisions?

New Internal Committee Structure to Appease Critics

Last week the PTAB announced a change to its internal handling of decisions. That is, while previously PTAB management reviewed certain decisions to ensure consistent treatment of relatively uncommon issues, that duty is now being passed to rank-and-file PTAB judges.

Why would anyone care about this (other than me), and why the change? Because the PTAB was plainly out-to-get innocent patent owners, that’s why!!

Continue Reading PTAB Adjusts Internal Review Process

314(a) Practices Evolve

Discretionary denials of AIA trial petitions under 314(a) have fallen significantly over the past few months. But, Fintiv practices are not quite dead yet. As noted by IPWatchdog last week, although less frequent, occasional denials still occur.

Certainly the WDTX is no longer the silver bullet to the PTAB. That is, recent congressional inquiry asserting that its trail dates are suspect, has highlighted that the agency should expect to reach a decision before the Court. Yet, the agency should not expect petitioners to make that point in their filings.

Continue Reading PTAB Fintiv Practices Need Reality Check

Tillis/Hirono Demand Answers on OpenSky

Barely on the job for a week, Director Vidal is already being politically pressured to address a festering issue of patent policy.   That issue—the use of a recycled IPR petition as a means to collaterally attack large damage verdicts— is a self-inflicted wound for the agency.  The OpenSky business model wouldn’t exist absent the ill conceived expansion of discretionary denial practices under former Director Iancu.

Senator Tillis (a vocal supporter of Director Iancu) sent a letter to the agency this past Wednesday demanding answers….gotta love politics.
Continue Reading Senate Grows Impatient with PTAB

Delaware To Become Less Popular for NPEs?

This past Monday, Chief Judge Connolly of D. Del issued a standing order for all pending litigation before him requiring disclosure of certain financial relationships from litigating parties.  The information is due 30 days from filing of an initial pleading, and includes arrangements made between parties and third party funders.

While eminently sensible in terms of identifying true decision makers for settlement purposes, or identifying potential conflicts of interest, the new requirements will surely send NPEs screaming into the night.
Continue Reading Delaware Court Looks To Unmask Litigation Funders

How the PTAB Ticks This Thursday!

Do you want to learn more about the inner workings of the Patent Trial and Appeal Board (PTAB)?   Hello!!….what IP nerd doesn’t!?   If so, the next PTAB Boardside Chat webinar will really spin the propeller on your cap.

This Thursday, March 17, from noon to 1 p.m. ET, the

High Value Disputes Spawning Wild-West Antics

I previously explained how Fintiv discretionary practices had spawned a new, cottage industry.  That is, with fully developed PTAB petitions being available to the public — denied only as a matter of discretion unique to the original filer— profiteers formed to simply refile such petitions.  The apparent goal being to leverage the publicly available petition materials where high-value verdicts had been subsequently secured on the subject patent.  With IPR institution leverage (or threat thereof) co-pending with a high-value verdict, this business model presumes that a patent owner would be open to a quick cash settlement.

One such profiteer, a company identifying itself as “Open Sky Industries,” recently leveraged early petition materials of Intel that pertained to its patent dispute with VLSI.  That dispute went to trial in the district court after Intel’s IPR petitions were denied under Fintiv.  At trial, a $2 billion+ verdict was entered.  Thereafter, Open Sky was successful in refiling Intel’s IPR materials, getting trials instituted on the subject patents with little to no cost or investment of its own.  The propriety of such re-filing practices is subject to an outstanding POP panel request.

If the optics of this practice weren’t bad enough for the PTAB….it has just gotten worse.
Continue Reading PTAB Needs to Immediately Check Unethical Practices

Federal Circuit Reverses Newest Member

The concept of excluding the PTAB via a forum selection clause is not a new idea.  Back in 2019 I highlighted this option as the #1 development in PTAB practice for district court litigators.  Since that time, there have been a handful of cases that sought to leverage this mechanism. Earlier this week, the Federal Circuit was given another opportunity to explore this topic, and the potential policy consequences of such private agreements.
Continue Reading Shutting Out the PTAB Via Private Agreement