As I predicted some months back, the new Director has now addressed the 314(a) policies of her predecessor. Under the previous Director, Fintiv and a filing in the WDTX, or ITC was a one-two punch for plaintiffs.
No more.
Continue Reading PTAB Pulls the Rug Out From Under WDTX Plaintiffs
Back in September of 2021, the “Restoring the America Invents Act” was released by Senators Leahy (D-VT) and Cornyn (R-TX). The bill sought to reverse virtually every PTAB development of the Iancu administration. At the time, I outlined my thoughts on the various provisions, and predicted the most controversial—from a bio/pharma perspective— would serve as cannon fodder.
Last week, a revised bill reemerged entitled the “PTAB Reform Act of 2022.” The new bill, includes most of the content of the earlier bill with only issues of particular interest to bio/pharma left on the cutting room floor.
Continue Reading Proposed PTAB Reforms Adjusted for Bio/Pharma
This past November, Senator Tillis has cautioned the agency that “it is difficult to imagine any plausible justification for the continued reliance on the demonstrably inaccurate trial dates set by the Waco Division.” Fintiv practices have remained unchanged since that time.
More recently, the WDTX had occasion to consider the competing schedule of another forum. Finding that the WDTX was faster, it looked to the realities of the other forum’s scheduling.
Continue Reading WDTX Looks at Average Time to Trial, Why Doesn’t the PTAB?
Discretionary denials of AIA trial petitions under 314(a) have fallen significantly over the past few months. But, Fintiv practices are not quite dead yet. As noted by IPWatchdog last week, although less frequent, occasional denials still occur.
Certainly the WDTX is no longer the silver bullet to the PTAB. That is, recent congressional inquiry asserting that its trail dates are suspect, has highlighted that the agency should expect to reach a decision before the Court. Yet, the agency should not expect petitioners to make that point in their filings.
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.
For those seeking some PTAB-related CLE, consider next Tuesday’s AIPLA webinar @12:30 (EST) entitled: Discretionary Denials Revisited: The New Politics of Fintiv. Register (here)
The program will explore the increasing politicization of the USPTO Director position, and what may be on the horizon relative to the uncodified discretionary
I’ve read a number of articles over the past few days that argue since the mandamus on Fintiv failed in Mylan Laboratories Ltd. v. Janssen Pharmaceuticals N.V., that this decision somehow forecloses the relief sought in the APA suit against the USPTO — not even close. The question of appellate jurisdiction over denied institution decisions (or what would amount to a proper mandamus) has absolutely nothing to do with the direct challenges made by the plaintiffs in the pending APA lawsuit.
Indeed, I expect the application of Fintiv to be enjoined within weeks (if not sooner).
Continue Reading PTAB Fintiv Factors Likely to Be Enjoined as APA Violation
Back in June, I predicted that an APA action against the USPTO and/or a mandamus petition to the Federal Circuit was inevitable given the PTAB’s practice of denying IPR petitions in favor of competing district court trial dates. Well…here we are.
Yesterday, Director Iancu was sued by a group of large tech companies for allegedly violating the APA by denying IPR petitions on the basis of a competing trial date, and late last week, one of the same companies also filed a mandamus petition seeking to force the agency to consider the merits of a petition denied as a matter of discretion even though it was filed some seven months before the 315(b) deadline.
Never a dull moment at the PTAB.
Continue Reading USPTO Sued Over Discretionary Denials
The practice of denying AIA trial petitions in view of competing district court trial dates has brought some negative attention to the Patent Trial & Appeal Board (PTAB) over the past few months. At the same time, patent litigation has increased over the first two quarters of the year by 20%. This surge has been greatly aided by the exploding popularity of the Western District of Texas (WDTX) with non-practicing entities — a district that the PTAB is increasingly deferring to in its discretionary denials based upon competing trial dates.
While Patent Owners are quick to point to a looming district court trial date as being set in stone, in reality, these dates are often reset once the PTAB hurdle is cleared.
Continue Reading District Court Trial Dates Tend to Slip After PTAB Discretionary Denials
Some weeks back I highlighted the institution decision in Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393), which held that despite most General Plastic Factors favoring institution, the majority felt as though a looming WDTX trial date trumped all other GP factors and denied institution. After petitioner’s unsuccessful request for a Precedential Opinion Panel (POP) hearing, the Board ordered additional briefing.
Today, the Board reversed course instituting the Sand Revolution IPR. In the process, the Board provided some insight into slipping WDTX trial dates and steps petitioners can take to help avoid discretionary denials of parallel AIA trial petitions.
Continue Reading PTAB Reverses Discretionary Denial Based on WDTX Trial