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Unnecessarily Ambitious

Late last week the USPTO issued an Advanced Notice of Proposed Rulemaking (ANPRM) that floated numerous rule proposals and requests for feedback — too numerous. Proposals addressing current 314(a) and 325(d) practices were not only expected, but long overdue. While these expected proposals were included in the sprawling Notice, the rule-making process will undoubtedly be bogged down by the remaining collection of controversial ideas and administrative over-reach.

Keep in mind that 314(a) Fintiv practices could soon be struck down as improper circumvention of APA rule-making. Stalling the issuance of those rules for at least another 12-18 months – if not longer – seems like a bad idea. My guess is political pressure from outside the agency led to the laundry list of additional proposals. Especially as they relate to for-profit entities in the wake of the Open Sky debacle.

Regardless, of how or why the expansive ANPRM came to be, I’ll walk through each proposal/idea in detail below (ANPRM here)

Continue Reading PTAB Rule Ideas – The Good, The Bad, & The Ugly
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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
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Rule Effort Worthwhile?

Back in November of 2021, the Northern District of California dismissed an APA lawsuit filed by a number of large companies seeking to challenge the PTAB’s NHK-Fintiv practices. At that time, I opined that the Court had overlooked some of the key APA arguments, and that the Federal Circuit would likely offer a more nuanced view. Yesterday, the Court, reversed-in-part and remanded for further consideration of the APA challenge.

Of particular interest, the Federal Circuit found that the APA challenge to the NHK-Fintiv practices (i.e., that such practices were unlawful absent notice and comment rulemaking) should not have been dismissed for lack of standing. While this may have been a very exciting development a year or so back, it is a bit anticlimactic in 2023.

Continue Reading PTAB Fintiv Practices On the Way Out?
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Declarations Are Often Limited in Scope & Content

The USPTO Director issued a precedential decision last month in Xerox Corp. v. Bytemark, Inc. that explained declarant testimony that merely repeats, verbatim, conclusory assertions of the petition (without citing additional evidence or providing technical reasoning), is to be given little weight. I didn’t find this determination to be blogworthy since this was how such testimony was being consistently treated by the Board.

What strikes me most about the decision was the need for the PTAB to have to emphasize such to the bar in the first place.

Continue Reading A PTAB Declaration is Not an Expert Report
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Fintiv Not a Single Step Framework

USPTO Director Vidal has issued a number of sua sponte Director decisions since her arrival. I haven’t bothered discussing them here as the majority are directed to rather unique 314(a) fact patterns that are unlikely to repeat going forward.

Today, in Commscope Technologies LLC v. Dali Wireless the Director issued her most recent decision on 314(a) practices. This decision, while similar in character to the previous decisions, shows the Director’s interest in assuring that her 314(a) framework is correctly followed.

Continue Reading Director Wants Full Fintiv Analysis from PTAB
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Panel Dependency Reinforces Bad Behaviors

As discussed last October, the Patent Trial & Appeal Board’s (PTAB) lack of consistency in addressing attorney misbehavior is a growing problem. Whether PTAB panels are busy attending to statutory deadlines on their docket, or turning a blind eye to procedural squabbles to better focus on the merits, the end result is that attorney misbehavior remains largely unchecked.

Attorneys that practice in district courts would never disregard applicable local rules. And district court judges that author such would not allow their rules to be ignored. While some PTAB judges take similar ownership of their forum, such APJs are increasingly few and far between. As a result, the “it doesn’t hurt to try” philosophy is becoming the de facto rule on many aspects of PTAB procedure.

Continue Reading The PTAB Needs Procedural Consistency
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Estoppel Future Uncertain

As pointed out last month, the SCOTUS has sought the Solicitor General’s input in Apple et al., v. California Institute of Technology. If the case is taken up, the Court will consider limiting the scope of IPR estoppel to art that was included in the petition, and that art which reasonably could have been raised “during the IPR.”

At present, “reasonably could have raised” is assessed at the time the petition is drafted (i.e., what could have been included in the petition), not what could have been included in the later trial (which is effectively nothing). While it is far from certain whether the Court will take the case — let alone narrow estoppel— petitioners might still consider their stipulation wording until this dispute is settled.

Continue Reading Sotera Stipulations to Haunt PTAB Petitioners?

Court Takes Issue with DJ Filing Prior to IPR

Patent infringement defendants seek IPR of patents asserted against them at the PTAB as an alternative to higher cost litigation. That is, a primary benefit of seeking IPR is the ability to seek a stay of the costlier district court action on the basis that the outcome of the IPR may moot the dispute through cancellation of the asserted claims, or at least greatly simplify the issues for trial.

Yet, not all patent litigation is initiated by patent owners. Often times a potential defendant will seek a Declaratory Judgment (DJ) to secure a favored district court forum in anticipation of an imminent litigation in a less favorable district (typically Texas)

Recently, the District of Delaware considered the impact of such proactive conduct on the typical IPR stay analysis.

Continue Reading PTAB Stay Calculus Considers DJ History

Scope of Estoppel Considered for Review

IPR estoppel is defined by 35 U.S.C. 315(e). The statute recites in relevant part that any claim subject to a failed IPR may not be argued by that petitioner in an infringement action as “invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 315(e)(2)

While there has been much debate in the lower courts as to the scope of “reasonably could have raised,” and even “ground,” the debate currently before the SCOTUS in Apple et al., v. California Institute of Technology turns on the meaning of “during.” That is, whether “reasonably could have raised” is assessed at the time the petition is drafted, or, during the actual proceeding. If estoppel is determined at the outset of petition drafting that scope is far broader than what could be added to an ongoing IPR proceeding (i.e., next to nothing).

Should this question ultimately taken up, the outcome could have significant consequences.

Continue Reading SCOTUS Seeks Gov’t Input on IPR Estoppel

Would a “Mini-Markman” Have Helped Patent Owners?

A long time ago, in a galaxy, far, far away….the Patent Trial & Appeal Board (PTAB) considered implementing a Markman style claim construction procedure it labeled a “Mini-Markman.” The idea, along with others was the result of a 2015-16 listening tour conducted by the agency under former USPTO Director Michelle Lee. The listening tour stopped at several locations across the U.S. to collect public feedback on AIA trial proceedings. The tour culminated in a draft rule package that contained a number of interesting ideas. Needless to say, that rule package was abandoned and never saw the light of day (for reasons unknown)

As we move into the new year and look forward to coming PTAB rule packages on discretionary denials and rehearing practices, I revisit this old idea in view of the never ending dialog on reforming the PTAB.

Continue Reading The Long Lost PTAB Markman Plan