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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

Senators Excoriate Perceived WDTX Venue Abuses

Back in September, I previewed the PTAB reform discussions that eventually issued as the Restoring the America Invents Act.  The Act, clearly a rebuke of the Iancu administration’s changes to AIA trial practices, also included a provision encouraging district court stays in view of PTAB challenges. The unspoken concern behind the stay provision is the growth of patent litigation in the WDTX . If there was any doubt about that rationale, the Senate Judiciary has just explicitly put WDTX’s Judge Albright directly in its cross-hairs.
Continue Reading Senate Judiciary Characterizes WDTX Practices as Unseemly & Inappropriate

Arthrex Provides Little Strategic Value in the End

Today the PTAB issued interim guidance on adaptations to its rehearing practices.  The interim procedures allow for a rehearing to be filed to the Director, this option can even be pursued after a failed rehearing to the assigned PTAB panel.  So, good news for those parties seeking another path for delay. On the other hand, the Director is not going to change the outcome of cases beyond current practices (roughly 5% win rate on rehearing).

In essence, the Appointment’s Clause battle, much like the constitutional challenges to the PTAB posed in Oil States and Cuozzo, was a long road to nowhere.
Continue Reading PTAB Director Rehearing Adds Little

POPR Disclaimer Dooms Infringement

Some weeks back I explained the varied uses of Patent Trial & Appeal Board (PTAB) trial evidence in district court trial records. However, it is not necessary for a trial to occur for patent challengers to create litigation value. For example, often times a petition will apply prior art that operates in a similar fashion to the accused product.  In distinguishing that art, the Patent Owner is effectively arguing against infringement.

In such cases, a failed AIA trial petition (art distinguished) can result in ultimate victory on the ligation side.
Continue Reading When Losing is Winning at the PTAB

Does 315(b) Codify Party Notice or Patent Notice?

Last summer, the Federal Circuit reversed the Patent Trial & Appeal Board’s (PTAB) practice of accepting IPR petitions as timely filed under 35 U.S.C. § 315(b) where a complaint for infringement was served outside of the one-year window, but dismissed without prejudice. Click-to-Call v. Ingenio   In its reversal, the Court reasoned that “the appropriate question is whether the voluntary, without prejudice dismissal of a civil action in which a complaint had been served nullifies an administrative time bar that is triggered by service of that complaint. It does not.”  As a result, IPR proceedings before the Board that had been instituted under that previous 315(b) exception have been terminated.

Since Click-to-Call, the question has been raised whether the 315(b) bar is triggered by a complaint for infringement of a patent where there is a question as to the ultimate patent owner, which causes the suit to be dismissed without prejudice and re-filed.

I don’t expect the Federal Circuit’s answer to be any different.
Continue Reading PTAB Identifies New Exception to One-Year Time Bar

New Guidance for Statutory Bars, Foreign Depositions & Confidentiality

Earlier this week, the Patent Trial & Appeal Board (PTAB) designated several IPR decisions as “informative.” As a reminder, an “informative” opinion, while not binding PTAB authority, illustrates norms of Board decision-making for the public, the patent examining corps, and future Board panels. Informative opinions may explain best practices, address recurring problems, identify developing areas of the law, exemplify types of decisions under-represented in commercial case reporting services, or report cases of public interest.
Continue Reading PTAB Designates AIA Decisions Informative

2016: The Administrative Procedures Act (APA) Takes Center Stage

In re Cuozzo Speed Technologies was certainly a watershed moment for AIA trial practices. The 2016 decision settled years of seemingly endless debate on the propriety of the Patent Trial & Appeal Board’s (PTAB) claim construction rubric. By endorsing the Board’s use of the Broadest Reasonable Interpretation (BRI), the high court squelched a key rallying cry of PTAB critics and simultaneously reinforced the legitimacy of AIA trial proceedings. Yet, while the Cuozzo challenge to BRI was noteworthy in a broader sense, the BRI debate (no matter how it came down) was not expected to change AIA trial practices in significant regard.

Other notable 2016 events included PTAB rule changes allowing preliminary responses to offer new testimonial evidence.

But, for practitioners, the real impact in 2016 came from the Federal Circuit’s recalibration of AIA trial practices.  The Court repeatedly reinforced the mandates of the Administrative Procedures Act (APA) in assessing acceptable AIA trial practices. Thus, the top 5 PTAB decisions this year come not from the PTAB or the Supreme Court, nor from rule changes, but instead, the Federal Circuit.
Continue Reading Top 5 PTAB Trial Developments of 2016

Cuozzo Debate Moves Forward

Over the past week or so, the Petitioner’s opening brief and supporting amicus filings have been submitted to the Supreme Court in Cuozzo Speed v. Lee. (Filings linked below). Cuozzo once again tries to draw a distinction between “adjudicative” PTAB trial proceedings and “examinational” proceedings relative to amendment options. The…