House and Senate Judiciary Committees Alerted to “Significant and Rapidly Growing Problem”

Earlier this month, a coalition of stakeholder organizations sent letters to the House and Senate Judiciary Committees seeking an investigation into the Patent Trial & Appeal Board’s (PTAB) application of discretion under 35 U.S.C. § 314(a).  More particularly, the organizations argue that the Board’s application of NHK Spring is “choking off access” to the PTAB and leading to a resurgence in patent litigation of questionable merit. The organizations ask that the USPTO report to Congress on these practices, and engage in formal rulemaking to guide agency practices.

Whether the requested action is provided or not, the continued application of 314(a) in the NHK context seems destined to end.
Continue Reading Congress Urged to Investigate PTAB Discretionary Denials

Precedential Opinions & Trial Guide?

The Federal Circuit’s en banc opinion in In re Aqua Products was as massive as it was unfulfilling. This was due, in part, to the court’s struggle with how to weigh policy of the agency that was not based upon the traditional notice-and-comment rule making of the Administrative Procedure Act (APA). Given the significant hurdles in issuing such rules (especially under the Trump administration’s 2-for-1 cancellation requirements) it is certainly understandable that an increasing amount of the agency’s guidance on AIA trial practice is provided by way of precedential Board decisions, and such documents as the Trial Practice Guide.

Yet, when the public is held to standards that were not promulgated in accordance with traditional APA practices, the Federal Circuit is left to decide what if any deference should be applied to such policies.
Continue Reading Precedential PTAB Opinions to Drive APA Challenges

Appeal Bar Dispute Heads to SCOTUS

The SCOTUS has shown an affinity for disputes of the Patent Trial & Appeal Board (PTAB). Today, the Court took up its 5th PTAB dispute in three years granting cert in Dex Media Inc. v. Click-To-Call Technologies, LP.

The underlying dispute in Dex relates to the one-year window of 35 U.S.C. § 315(b). As is well-known, this window precludes AIA trial petitions from a party more than one year after service of a complaint of infringement. Prior to the Federal Circuit’s reversal in Dex (more familiar to practitioners as “Click-to-Call”), the Board had consistently held that where a first-filed complaint (outside the window) was dismissed without prejudice, that the original window trigger becomes a nullity. The Federal Circuit disagreed, holding that the voluntary dismissal of a civil action does not nullify an administrative time bar that is triggered by service of that complaint.

In granting cert, the Court will consider only the the threshold issue of whether 315(b) disputes are even reviewable by the Federal Circuit in view of the appeal bar of 35 U.S.C. § 314(d). That is, the Court will have an opportunity to expand upon the “shenanigans” discussed in Cuozzo Speed Techs. v. Lee that are outside of the 314(d) appeal bar.
Continue Reading SCOTUS Review of PTAB Appeal Bar Unlikely to Change 315(b) Time Bar Realities