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 Most of the changes addressed rules outdated by the SCOTUS decision in SAS Institute, or simply codified existing practices, such as sur-replies.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

Webinars This Week on Post-Grant Patent Practice

A few interesting programs this week for those interested in a refresher on patent reexamination, or looking toward 2021 PTAB possibilities.

First, tomorrow (Tuesday) brings one of my favorite CLE programs of the year.   IAM’s IP 2020 (formerly Patent Law & Policy) kicks off tomorrow and runs through Thursday of this week. This program will explore litigation trends with a particular eye toward the political implications of the election and its impact on patent law policy.  A PTAB segment is offered on Thursday morning (9AM) that covers practice updates and developments. (register here)

Second, on Thursday afternoon Unified Patents presents — Reexaminations Reborn: Strategies for Filing Ex Parte Reexaminations.  The program will cover an overview of the ex parte reexamination process, strategies employed in successful filings, and look at the overall data behind reexaminations.  The program will also compare and contrast the benefits of PTAB challenges, and the role of patent reexamination in view of current and future developments. (register here)

Hope you can tune in to one of these informative events.

Simple Agency Fix Would Cure Optics Problem

In another week, the USPTO will close comments on its recently issued Request for Comments (RFC). As previously discussed, the RFC seeks public input on its discretionary practices under 314(a), including  serial and parallel petition practices, and what if anything the PTAB should do to refine its approaches.

When it comes to parallel petitions, the PTAB could easily eliminate upward of 80-90% of these filings with a simple tweak to its procedures. Continue Reading The Vast Majority of Parallel PTAB Petitions Are Easily Eliminated

RPX Data Disputes Bias Allegations

As I explained a few months back,  a due process challenge is pending at the CAFC that challenges the PTAB’s fee model.  New Vision Gaming v. SG Gaming Inc.  The argument, in a nutshell, is that because the fees for AIA trial proceedings include a separate component for the trial, and that collection of this fee makes up about 40% of the PTAB’s yearly budget, that this amounts to “a structural bias unlike any other in the federal executive branch.” (My take on that theory is found in the earlier post).

An amicus filing made in New Vision further alleges that the PTAB demonstrates a bias only in October? Continue Reading PTAB Institutional Bias Argument Assailed

CAFC Side Steps 314(a) Controversy on Procedural Grounds

As detailed back in September, there were separate attacks launched against the PTAB’s practice of denying AIA trial petitions in favor of advancing district court trial dockets. The first was a mandamus petition filed with the Federal Circuit challenging a particular IPR denial, the second an APA action filed by a number of large tech companies challenging the agency’s Fintiv practice as being in excess of its jurisdiction.

Last week, the Federal Circuit denied the mandamus, finding the matter barred from appeal in a straightforward opinion. Continue Reading Challenge to Fintiv Fails on Mandamus