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Critical U.S Industry Depends on the PTAB – Not China

The so-called PREVAIL Act (here) was floated some weeks back to “to ensure the United States does not cede technological supremacy to our foreign competitors and adversaries.” As the accompanying materials insist, fighting China is the rationale behind the bill’s proposed patent reforms. That is, the U.S. Patent system must be made stronger to rival the Chinese threat by weakening the USPTO’s Patent Trial & Appeal Board (PTAB).

If this “stronger patents” argument sounds familiar, it should. Before its reinvention as the Prevail Act, the same “litigation first” ideas were packaged to the American public as the so-called Stronger Patents Act. But, the “Stronger” Bill went absolutely nowhere despite being introduced every year for the past six years (maybe 7, I lost count).

Not surprisingly, increasing patent litigation expense and unnecessary liability for successful U.S companies in the name of “stronger patents” didn’t resonate on the Hill. This is because the America Invents Act (AIA), which created PTAB trial was passed into law a little more than a decade ago for the purpose of reducing wasteful litigation over improvidently issued patents— and is working exactly as intended. Few legislators (aside from sponsors) were interested in a proposal to effectively repeal the AIA. So, after years of failure, this perennially failed effort has been newly-minted as the PREVAIL Act.

While the new spin also argues for stronger patents, it presents the need as a necessary tool to “prevail” against the growing technological threat from communist China. Ironically, the blatant dishonesty of this new spin only serves to highlight the critical importance of the PTAB to U.S. interests.Continue Reading The Prevail Act – Harm U.S. Industry to Fight China?

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Burden on Proponent of Affirmative Defense

Back in 2016 district courts started encountering infringement suits where the subject patents had survived PTAB challenge. In such scenarios, estoppel applied to failed petitioners under 35 U.S.C. § 315(e)(2). To asses whether invalidity defenses asserted in the later court case should be estopped as arguments that “reasonably could have been raised” in the failed IPRs, the courts needed to determine whether the newly asserted art could have been located by a reasonably skilled searcher at IPR filing. But, 325(e)(2) is silent as to which party bears the burden of proof on this issue of estoppel.

That is, does the Patent Challenger have to show that it could not have found the art with reasonable diligence, or, does the Patent Owner have to show that art could have been found with reasonable diligence?

Most courts held that since estoppel was an affirmative defense, the burden fell on the proponent patent owner. Today, in a precedential decision, the Federal Circuit agreed.Continue Reading PTAB Estoppel Proof Falls to Patent Owners

PTAB Reform Act of 2022

Back in September of 2021, the “Restoring the America Invents Act” was released by Senators Leahy (D-VT) and Cornyn (R-TX). The bill sought to reverse virtually every PTAB development of the Iancu administration. At the time, I outlined my thoughts on the various provisions, and predicted the most controversial—from a bio/pharma perspective— would serve as cannon fodder.

Last week, a revised bill reemerged entitled the “PTAB Reform Act of 2022.” The new bill, includes most of the content of the earlier bill with only issues of particular interest to bio/pharma left on the cutting room floor.Continue Reading Proposed PTAB Reforms Adjusted for Bio/Pharma

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

CLE This Month

For those seeking some quality CLE this month, consider the second annual Patent Litigation Masters™ 2022 program, presented by IPWatchdog® this coming May 23rd-24th. The program is offered live at the Hyatt Regency (Dulles Airport). The two-day agenda offers a number of compelling topics, and as usual with the Watchdog Masters Programs…

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

Next Week’s CLE Agenda

For those seeking CLE this month, a number of great programs to consider in the coming weeks.

First up, the freebie 🙂

Next Tuesday, March 15th @ 1pm(EST) Gardella Grace presents the free one-hour webinar entitled In Possession of an Invention? Litigation Insights for Life Sciences Patent Drafting.  Presenters include…

Dispute Over Reexamination Vacatur Sent Back to VA Court

The recent trend of denying PTAB trial petitions on discretionary grounds has been argued to frustrate the purpose of the America Invents Act (AIA).  Indeed, patent reexamination filings — the clunky mechanism the AIA was supposed to supplant — surged by 60+% last year.  With stakeholders unhappy with how the PTAB is operating, interesting questions are being raised on when/how a reexamination remains viable after a failed AIA trial petition.

Last year, the Federal Circuit considered the timing of a Patent Owner 325(d) challenge to a follow-on reexamination after a failed IPR petition. This week, the Federal Circuit considered whether a petitioner that has been denied a reexamination can seek further review via an APA action of the district court.
Continue Reading Reexamination Denial Subject to APA Judicial Review

The Check is in the Mail!

Not much exciting going on at the PTAB until the new Director arrives in a few weeks.  But, there was at least one new POP decision that is worth mentioning.

In Toshiba America Electronic Components, Inc. v. Monument Peak Ventures, LLC the Precedential Opinion Panel (POP) held that payment for an AIA trial petition is effective when received by the Treasury.  I know, I know…try to contain your excitement.
Continue Reading PTAB Finds Wire Payment Effective When Received by Treasury

VLSI Requests Open Sky Rehearing

PTAB discretionary practices under 314(a) have been the subject of significant controversy and unpredictability. Perhaps the most noteworthy example of the fallout from this practice has been the dispute between VLSI and Intel.  When Intel challenged VLSI’s patents at the PTAB via IPR, due to the proximity of the Texas trial date, the IPRs were denied by the PTAB as a matter of 314(a) discretion. Thereafter, a $2+ Billion judgment was entered by the Texas court.

It wasn’t long after the big verdict before profiteers formed — with no competing trial date or interest in the patents aside from a potential pay day.  Refiling the very same Intel arguments and evidence with the PTAB, at least one filer, Open Sky Industries, succeeded where Intel failed.  Presumably, hoping that the IPR institution leverage (or threat thereof) would lead to a quick settlement with VLSI.

Now the agency has a public relations mess on its hands.Continue Reading POP Panel to Consider Profiteers Gaming PTAB