NHK Swallows General Plastic

The America Invents Act (AIA) was passed into law in 2011 to provide a more cost-effective, faster alternative to district court patent litigation.  At the time, bill sponsors explained that some of America’s largest innovators were paying more to their patent lawyers in a given year — to defend against “patent troll” suits— than they were on new research and development.  The role of the Eastern District of Texas (EDTX) in this perceived problem was not lost on legislators.  Provisions were added to the AIA to address perceived joinder abuses in the EDTX.  And, in many respects, EDTX plaintiff behaviors abruptly transformed the AIA from an esoteric, multi-year legislative debate, into law.

Of course, EDTX remains one of the most popular patent venues in the U.S. despite the AIA, and additional efforts to rein in this venue option in TC Heartland.  More recently, EDTX has inspired a copycat venue in the Western District of Texas (WDTX), which has seen a 700% increase in patent cases since 2016. The expansion in popularity of Texas district courts, especially for non-practicing entities (NPEs), makes the PTAB’s recent deference to such litigation under its NHK precedent all the more troubling given its AIA mandate. Continue Reading Texas Plaintiffs More Likely to Side-Step PTAB?

Invalidity Counterclaims-In-Reply Will Not Trigger 35 U.S.C. § 315(a)

Congress created IPR to provide a “quick and cost effective alternative[ ] to litigation.”  To fulfill that role, Congress limited a party’s ability to seek an IPR after commencement of civil litigation in two ways: (1) under § 315(a), no IPR may be instituted if the challenger filed a civil action challenging the validity of a patent claim before filing the IPR petition, and (2) under § 315(b), an IPR may not be instituted on any petition filed more than one year after the petitioner (or a real party in interest or privy) was served with a patent infringement complaint.  These provisions are designed to control PTAB filings concurrent with civil complaints.

In a recent decision, the Northern District of California lamented that the statutory provisions permit a counterclaim of invalidity in a Reply. 315(a)(3). The Court interpreted such a counterclaim to be a “loophole.” Continue Reading Declaratory Judgement Loophole at PTAB?

Most Patent/Trademark Prosecution Dates Extendible – Some PTAB

The United States Patent and Trademark Office (USPTO) today announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27.  Today’s announcement is in addition to earlier announced accommodations. Continue Reading USPTO Offers 30 Day Extensions Under CARES Act

PTAB May Not Create a New Ground of its Own, But Can Rely on Additional Art in Support of a Petition Ground

Recently, the Federal Circuit in Philips v. Google (here) explained that the Patent Trial & Appeal Board (PTAB) may only institute trial on grounds presented in a trial petition. 948 F.3d 1330 (Fed. Cir. 2020).  That is, the Board may not formulate its own grounds from the petition art.  This is because the Supreme Court has explained the AIA statutes do not “contemplate a petition that asks the Director to initiate whatever kind of inter partes review he might choose.” SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1355 (2018).

But, as explained this week in Lone Star Silicon Innovations LLC v. Iancu (here), this prohibition against agency formulated grounds does not prevent the Board from looking to additional references for evidentiary support (such as general knowledge in the art) to support an existing trial ground. Continue Reading New PTAB Ground or Just Supporting Evidence?

PTAB Designates New Precedential & Informative Decisions on Discretionary Institution Practices

Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469 (PTAB Feb. 13, 2020) (Paper 6) (precedential)

This decision denies institution of an inter partes review based on 35 U.S.C. § 325(d), explaining that the Board uses a two-part framework for exercising discretion under § 325(d). After applying the framework, the Board determined that the Petition presents the same or substantially the same prior art previously presented to the Office and that the Petitioner failed to show that the Examiner materially erred as to the patentability of challenged claims.

PUMA North America, Inc. v. NIKE, Inc., IPR2019-01042 (PTAB Oct. 31, 2019) (Paper 10) (informative)

This decision denies institution of an inter partes review based on 35 U.S.C. § 325(d), where the Examiner twice rejected the challenged claims over the same combination of references in the same manner the Petitioner proposed, and the Petitioner failed to show examiner error.

Oticon Medical AB v. Cochlear Limited, IPR2019-00975 (PTAB Oct. 16, 2019) (Paper 15) (precedential as to sections II.B and II.C)

This decision to institute declines to exercise discretion under 35 U.S.C. § 325(d) after determining that the cited art is not substantially the same as the art considered during prosecution and that the Examiner erred in not considering the art during prosecution. The decision also declines to exercise discretion under 35 U.S.C. § 314(a), distinguishing NHK Spring Co. v. IntriPlex Technologies, Inc., IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), because no trial date had been set in the co-pending district court case, and the IPR would not be duplicative of the district court consideration of validity.

CAFC Provides Last Word in PTAB Appointments Clause Debate

Given the remands that have been flowing back to the Patent Trial & Appeal Board (PTAB) from the Federal Circuit over the past few weeks, the writing has been on the wall as to en banc rehearing in Arthrex v. Smith & Nephew Inc.  The Court officially denied rehearing today.  Still, the 62 pages of differing viewpoints offered by the Court in its denial of rehearing essentially presented the Court’s collective reasoning anyway.

The per curiam opinion explained the earlier decision in the context of the dissenting views. That is, as between striking down the AIA and severing Title 5 protections for administrative patent judges, Congress was more likely to favor the latter.

Continue Reading Arthrex & 81 PTAB Remands

PTAB Estoppel & Inequitable Conduct

Inequitable conduct before the USPTO is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. Thereasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285 (Fed. Cir. 2011).  Given the increasing inventory of Final Written Decisions (FWD) in larger patent portfolios, practitioners are only now beginning to confront issues of inequitable conduct relating to agency based estoppel.  That is, if a patent owner advances a position inconsistent with a previous PTAB FWD on a patent/related patent under 37 C.F.R. § 42.73(d)(3), whether such a practice constitutes inequitable conduct. It just might.

But, for the time being, the courts’ lack of experience with the PTAB’s rule-based estoppel is benefiting patent owners. Continue Reading Patent Prosecution After an Adverse PTAB FWD – Beware

Court Finds Issue Joinder Inconsistent with AIA Statute

As I predicted back in August, the Federal Circuit has now effectively reversed the PTAB’s first Precedential Opinion Panel (POP) decision in Proppant Express Investments v. Oren Technologies, Case IPR2018-00914 (PTAB Mar. 13, 2019) (Paper 38)  In this decision, the POP held that 35 U.S.C. § 315(c) provides discretion to allow a petitioner to be “joined” to a proceeding in which it is already a party, and provides discretion to allow joinder of new issues into an existing proceeding (here).

In  Facebook, Inc. v. Windy City Innovations, LLC, the Federal Circuit held that 315(c) was not ambiguous—an existing “party” to a proceeding cannot be joined as a party— and, as such there was no reason to even consider the earlier POP precedent for according any Chevron or Skidmore deference.  However, the Court then went on to explain that even if there were ambiguity, the POP decision would not be accorded deference in accordance with administrative law principles. Continue Reading CAFC Reverses PTAB POP Precedent

Extraordinary Situation May Extend Some Trial Schedules

Yesterday the USPTO issued guidance on the Coronavirus outbreak, explaining that it considered the effects of the Covid 19 pandemic to be an “extraordinary situation” within the meaning of 37 C.F.R.§ 1.183 and 37 C.F.R. 2.146 (trademarks).  The guidance waived revival fees for ex parte patent/trademark applications and patent reexamination matters that went abandoned as a result of missing a deadline.

The guidance did not address AIA Trial Proceedings.  The agency’s position that the pandemic is an “extraordinary situation,” however, is sure to result in party requests to extend 12-month PTAB trial schedules. Continue Reading PTAB Trial Schedules & Covid 19

Expert Agency Shown Deference in Matters of Claim Scope

While IPR petitioners may only challenge patent claims based upon patents and printed publications (§§ 102 and 103), the PTAB trial record can be leveraged in parallel district court proceedings on related issues.  For example, PTAB fact findings on claim construction have been adopted by district courts on motions for summary judgment. And recently, a plaintiff in the District of Utah leveraged a PTAB finding to obtain a favorable outcome regarding indefiniteness on summary judgment. Continue Reading Leveraging PTAB Records in District Court