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

Stark and Vidal Nominations Head to Finish Line

Tomorrow morning, the Senate Judiciary will pass the nominations of Leonard P. Stark to be United States Circuit Judge for the Federal Circuit, and Katherine Vidal to be Under Secretary of Commerce for Intellectual Property & Director of the United States Patent and Trademark Office, to the Senate floor for final vote.  Neither have garnered any meaningful opposition that would result in a negative vote.  While Senator Tillis was initially hesitant to endorse Vidal due to her perceived interest in reversing PTAB policies established under former Director Iancu, Tillis announced today that he is in favor of her nomination, explaining (here):

Thanks to Director Iancu’s leadership, the PTAB now protects small businesses and has finally achieved the balance Congress intended when we passed the America Invents Act.

I’ve been clear from the beginning that any nominee for USPTO Director must commit to continuing and building upon these reforms to receive my vote. During Kathi Vidal’s confirmation hearing and in questions for the record, I asked tough questions on her views regarding these reforms and sought a simple yes or no commitment on if she would continue them. After reviewing her answers and talking with her one-on-one, I’m happy to say I’ve received such a commitment.

With bipartisan support from Tillis and Leahy, Vidal will be passed out of Committee to a floor vote.  The floor vote is fairly pro-forma for agencies such as the USPTO.

Vidal’s “commitment” to Tillis is hardly a sacrifice.  Tillis himself has openly advocated for the PTAB to recalibrate its 314(a) practices given the “unrealistic” trial schedules in place in the WDTX.  Making that change alone would allow for 314(a) practices to continue, but watered down to the point where it is a far less pronounced concern for petitioners.  As explained in December, I expect more incremental changes along these lines from the new Director.  There is simply no need to walk back Iancu policies altogether.  Indeed, with proposed legislation and an APA lawsuit pending that each seek to outlaw 314(a) practices, that eventuality may very well come to pass independent of Ms. Vidal’s efforts.

Happy New Year!

Tis the Season for Retrospectives….fa la la la la la la la la

This year I posted my top 2021 PTAB developments over at IPWatchdog. You can find it here Patent Trial and Appeal Board Year in Review: The Top Five PTAB Developments of 2021

For a more in depth discussion of these issues, and the expected impact on the PTAB in 2022 and beyond, don’t miss IPWatchdog’s  PTAB Masters January 24th-27th

Happy New Year!

Director Vidal 2022

The Senate Judiciary vetted USPTO Director Nominee Kathy Vidal earlier this month.  Not surprisingly, the hearing was fairly uneventful (even for uber-geeks, like myself).  With a confirmation vote looming, some final written materials have been submitted by Ms. Vidal that are similarly generic in espousing any particular viewpoint that could be labeled as “pro-patent” or “anti-patent.”  That said, reading the tea-leaves, there are some PTAB developments that seem inevitable for 2022 given the current landscape. Continue Reading Expect Slight PTAB Adjustments From the New Director in 2022

CAFC & USPTO Director Nomination Hearings

At 10AM today, the Senate Judiciary Committee will hold nomination hearings for Leonard P. Stark to be United States Circuit Judge for the Federal Circuit, and Katherine Vidal to be Under Secretary of Commerce for Intellectual Property & Director of the United States Patent and Trademark Office.  It appears that Judge Stark is up first on Panel 1.  Panel 2 follows with district court nominations, and Ms. Vidal.

Watch live (here)

Don’t expect any of the exchanges to be all that insightful, or confrontational.  It will be the usual qualified, non-answers and occasional softball question.  There seems to be some expectations that Ms. Vidal will be grilled over her view of discretionary PTAB practices, don’t count on it.  While I am sure the topic will be raised, it’s far too esoteric an issue to stall a nomination to an agency of little interest to the general voting public.  And, Ms. Vidal is certainly smart enough to toe the line.  That said, given the vocal support of Leahy for the Director nominee, and the less than enthusiastic reception of Tillis, its not hard to read the PTAB tea leaves.

Both nominations appear primed for confirmation.

Upcoming PTAB CLE

ACI’s inaugural “PTAB Briefing” arrives in two weeks.  The program will provide an in depth-discussions and year-end analysis of the most significant developments impacting PTAB practice as well as future forecasts for 2022.

I will be speaking on the panel entitled: Think Tank: Recent Developments & the Future Direction of IPR Proceedings. This panel will cover pending legislative initiatives, possible impact of the new Director, and expected practice changes to come.  I hope to see you there.

Inbox me if you would like a free pass to the program.

Appeal Bar Deemed to Bar APA Suit

Back in September of 2020, a number of large tech companies sued the USPTO for violating the APA by denying IPR petitions on the basis of a competing trial date. More specifically, the suit argued that the so-called NHK-Fintiv practice — implemented without notice and comment rulemaking — was in violation of established APA practices.  Since filing, the Court seemed quite interested in that argument at an earlier oral hearing on summary judgment.  Oddly, the case was dismissed yesterday based upon the 314(d) appeal bar.

Continue Reading NHK-Fintiv APA Suit Ends Abruptly

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Draft Bill Dead on Arrival

Last week, the “Restoring America’s Leadership in Innovation Act” was again floated by Republican Congressman Thomas Massie (KY).  The same draft Bill was previously released in 2018 and 2020.  Backed only by a handful of relatively powerless House Republicans, the Bill proposes a number of highly controversial measures.  But, if you are going to dream, dream big! Continue Reading Make Patent Trolls Great Again!

Senator Tillis Warns Agency, Requests Report on Fintiv Practices

As I pointed out in my previous post, the Senate Judiciary Committee has targeted WDTX venue practice as unseemly and inappropriate.  In a two-pronged attack on the WDTX, Senator Tillis is now warning the PTAB to stop relying on unrealistic WDTX trial dates in its Fintiv analyses.  This separate letter to Acting USPTO Director Hirshfeld is signed only by Senator Tillis as he supports Fintiv practices (Leahy does not).

In the letter, Senator Tillis points out that a far more predictable indicator of the ultimate trial date is average time to trial, not the “aggressive trial dates” set by judge Albright. Continue Reading PTAB Warned to Disregard Unrealistic WDTX Trial Schedules

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