New PTAB Roadblocks & Strategies

Earlier this week I laid out my Top 5 PTAB cases of 2020 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like the practitioner list, my Top 5 PTAB developments of 2020 for District Court Litigators will focus on those practical PTAB developments that will impact parallel litigation practices outside of the agency.

In 2020, there were a number developments of interest to litigators, from litigation forums where a PTAB challenge is foreclosed or highly unlikely, to stipulations for avoiding PTAB discretionary denials, and new risks of collateral estoppel across a litigated portfolio. Continue Reading Top 5 PTAB Developments of 2020 for District Court Litigators

Director Memo Decides Against Standard of In Re Packard

Back in 2018 I noted the current PTO administration had backed away from a dispute on the appropriate 112 standard to apply in AIA trials (after intervention by the previous PTO administration). That is, the initial intervention sought to support the application of the standard enunciated by In re Packard to AIA trial proceedings.  After Director Iancu came on board, that Intervenor Brief was withdrawn.

Today, the PTO formally announced (via memorandum) that the Nautilus standard applies to AIA trials – settling an open question….at least for the time being.

Continue Reading PTAB Applies Nautilus 112 Standard to AIA Trials…For Now

2020: POP Precedents & Director Driven Changes

In 2020, the Board continued to expand 314(a) discretion through numerous Precedential Opinion Panel (POP) decisions. These decisions, among a number of other developments, demonstrated a clear interest on the part of the current Director to rebalance AIA trial proceedings in the direction of patent owners.  At the same time, the agency experienced increasing push back from larger innovator organizations — often subject to frivolous patent litigation— to rein in discretionary practices as it relates to favorite NPE venues. Rule packages attempting to codify 314(a) practices in a manner that would conform with the Administrative Procedure Act (APA) were killed, and lawsuits challenging the agency 314(a) practices were filed.  In the background (as seems to occur every year) a constitutional challenge to the PTAB’s very existence made its way to the SCOTUS.

Another exciting PTAB year in the books. But before closing the books on 2020, here are my Top 5 PTAB decisions/developments that changed the game for PTAB practitioners. Continue Reading Top 5 PTAB Decisions of 2020

Another Day, Another 314(a) Discussion

On the heels of its precedent of a week or so back, the PTAB is adding more to the swirling hairball known as the “Fintiv factors.”  First, the Board has clarified that agreeing to IPR estoppel proactively (before institution) and not pursuing such grounds in the parallel infringement proceeding, is a strong factor in favor of institution.

Sotera Wireless, Inc. v. Masimo Corporation, IPR2020-01019, Paper 12 (Dec. 1, 2020) (precedential as to § II.A) (here)

In addressing the Fintiv factors, Sotera explains that the petitioner’s broad stipulation not to pursue in district court any ground that it raised, or could have raised, in the inter partes review weighs strongly in favor of institution.  (I don’t see much downside to such a stipulation as you are far more likely to succeed at the PTAB on such grounds anyway.)

Snap, Inc. v. SRK Technology LLC, IPR2020-00820, Paper 15 (Oct. 21, 2020) (precedential as to § II.A) (here)

Snap explains that a district court stay that would remain in place until an inter partes review final written decision weighs strongly in favor of institution.  (Of course, if the case is stayed I am not sure why the Fintiv factors would even be applied since there is no longer a fixed trial date or any efficiency consideration.)

POP to Decide Further Extension of 314(a)?

A year or so back, I discussed a 314(a) dispute at the Patent Trial & Appeal Board (PTAB) where the Board considered a co-pending ITC investigation. In that decision, the Board instituted trial, pointing out that “the ITC does not have the authority to invalidate a patent and ITC decisions do not necessarily pertain to the issues raised in an inter partes review petition.”  More recently the applicability of ITC investigations to a Fintiv factor 314(a) analysis was raised in Garmin International, Inc. v. Koninklijke Philips N.V., (IPR2020-00754).

In Garmin, the Board found that a co-pending ITC investigation favored a denial of institution. The case is noteworthy as in assessing the Fintiv factors, the Board effectively made clear that any petition concurrent with an ITC filing should be denied.

Now the dispute is up for consideration by the Precedential Opinion Panel (POP). Continue Reading 314(a) To Block All ITC Disputes from PTAB?

Final Rule Package Updates Current PTAB Practices with Two Additions

The USPTO will publish a final rule package today (draft here) that largely presents the earlier Notice of Proposed Rule Making in final form. Most of the changes addressed rules outdated by the SCOTUS decision in SAS Institute, or simply codified existing practices, such as sur-replies.  As such, the bulk of the earlier proposals were not controversial.

However, the earlier Notice also proposed one new idea, eliminating the presumption accorded to petitioner testimonial evidence in the preliminary proceeding (when disputed by patent owner testimonial evidence to the contrary). This proposal was the focus of much of the public commentary.

Despite most bar associations opposing this change, the final rule will in fact eliminate the presumption, starting January 11th (January 9th being a Saturday). The Final Rule also adds a new rule-based prohibition on Sur-reply filings. Continue Reading PTAB to Eliminate Institution Presumption on January 11th

Boardside Chat Focuses on Multiple Petition Outcomes

This coming Thursday, December 10th, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) will offer its next Boardside Chat Webinar to discuss several aspects of PTAB trial proceedings.

Lead Judge Bill Saindon will present the results of the PTAB’s recently updated multiple petitions study. Lead Judges Jessica Kaiser and Michelle Ankenbrand will share preliminary results of the Motion to Amend Pilot Program. Lead Judge Ankenbrand will explain the purpose of two forms available for the public to use in seeking designation of PTAB decisions as precedential or informative and in addressing whether the Precedential Opinion Panel grant or not grant review in a particular case.

The webinar is free and open to all (here). There will be a Q&A session at the end.  Questions may be sent in advance or during the webinar to PTABBoardsideChat@uspto.gov

Designation of Additional Cases Clarify Basis for RPI Disputes

Last Friday the Patent Trial & Appeal Board (PTAB) added to its list of precedential cases. The new precedent clarifies when RPI disputes will be considered by the Board, what factors will be considered for petitions lodged by member organizations, and whether joinder can be leveraged by a failed petitioner.

RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential)(here)

This decision on remand from the Federal Circuit holds that the petitioner was time-barred because the petitioner’s client was an unnamed real party-in-interest that had been served with an infringement complaint more than one year before filing the petition. Given the highly factual nature of this case, the precedential value of this case lies in the application of 314(a) to such filings as “follow-on” petitions, and that the factors outlined by the CAFC in its remand decision may be applied to similar circumstances where member organizations are involved (assuming a time bar exists to trigger the assessment in accordance with SharkNinja, below)

SharkNinja Operating LLC v. iRobot Corp., IPR2020-00734, Paper 11 (Oct. 6, 2020) (precedential)(here)

This decision instituting inter partes review holds that, while petitioners must identify any real parties-in-interest, and must do so in good faith, the Board does not need to resolve a dispute regarding a possible real party-in-interest if it would not impact the Board’s institution decision (i.e., there is no time bar involving the disputed, unnamed party).

Apple Inc. v. Uniloc 2017 LLC, IPR2020-00854, Paper 9 (Oct. 28, 2020) (precedential)(here)

This decision denying institution and the petitioner’s joinder motion applies the factors set forth in General Plastic to a copycat petition that the petitioner filed against the challenged patent after its first petition was denied institution.  That is, 314(a) will prevent joinder where the joining party is utilizing joinder as a mechanism to present a “follow-on” petition as defined by General Plastic.

Abusive Petition Practices Effectively Controlled by PTAB

Once upon a time, the Patent Trial & Appeal Board (PTAB) accepted AIA trial petitions that attacked a subject patent in a serial fashion.  That is, typically, a group of defendants of a multi-defendant suit  would stagger their filings against a subject patent. For example, Company A would file first, after seeing the Patent Owner’s Preliminary Response to Company A, Company B would file, and then after the Board issued its Decision to Institute relative to Company A’s petition, Company C would file.  In this way, each succeeding petition could improve over the first filed petition and increase the likelihood that the patent would be cancelled. This was not fair, and to the agency’s credit, once this strategy became clear, it was shut down.

With the issuance of the General Plastics decision, as any practitioner would attest, a serial petition strategy has become near impossible.  But that hasn’t stopped PTAB critics from claiming the practice somehow still exists. Continue Reading PTAB Debunks Multiple Petition Criticisms in Newly Released Statistics

Online Form Will Simplify Request Procedure

To date, in order to submit an amicus brief in a PTAB case selected for Precedential Opinion Panel (POP) consideration, an interested party would either look to an Order from the Board in a subject case inviting such, or approach the Board/parties to communicate their request to the assigned panel. Today the Board introduced an online form to submit such requests directly to the agency. (here)

The Board obviously has an interest in simplifying procedures, but, of particular note here is the potential benefit of this interface to pending disputes over administrative law practices of the agency. Continue Reading PTAB Adds Online Interface for POP Related Amicus Requests