Apple Factors Added to NHK Mix

A few weeks back I highlighted the fact that the Patent Trial & Appeal Board (PTAB) was in the process of considering a more nuanced approach to NHK determinations.  That is, with a few Board decisions seemingly denying IPR trial institutions on the sole basis of a competing, and earlier district court trial date, the Board was considering whether its approach had become too rigid.

Today, the Board designated as precedential the supplemental briefing order in Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020), which lists six factors to be assessed in such scenarios.
Continue Reading PTAB Adds Factors to Assess Import of Competing Trial Date

Additional Briefing Invited on Binary Application of NHK

Last week I pointed out that the litigation timing factor introduced by NHK Spring Co. Ltd. v. Intri-Plex Technologies Inc., has effectively swallowed the entirety of the General Plastic factors in NHK scenarios. That is, in some recent Board decisions, institution has been declined in AIA Trial Proceedings on the sole basis that a district court litigation would reach trial first.  Given the AIA has its own timing mechanism, 35 U.S.C. § 315(b), and plaintiffs seeking to avoid the PTAB need only go to the WDTX (where NPEs tend to go anyway) to leverage this development, this is a troublesome development for the system.

In that same post, I pointed out that a request was made to the Precedential Opinion Panel (POP) to review the Board’s application of NHK (Sand Revolution II LLC., v. Continental Inter Modal Group – Trucking LLC. (IPR2019-01393). While that request was denied, the very next day, the panel in Sand Revolution ordered supplemental briefing on this important topic.
Continue Reading PTAB to Take a More Nuanced Approach to NHK Determinations?

NHK Swallows General Plastic

The America Invents Act (AIA) was passed into law in 2011 to provide a more cost-effective, faster alternative to district court patent litigation.  At the time, bill sponsors explained that some of America’s largest innovators were paying more to their patent lawyers in a given year — to defend against “patent troll” suits— than they were on new research and development.  The role of the Eastern District of Texas (EDTX) in this perceived problem was not lost on legislators.  Provisions were added to the AIA to address perceived joinder abuses in the EDTX.  And, in many respects, EDTX plaintiff behaviors abruptly transformed the AIA from an esoteric, multi-year legislative debate, into law.

Of course, EDTX remains one of the most popular patent venues in the U.S. despite the AIA, and additional efforts to rein in this venue option in TC Heartland.  More recently, EDTX has inspired a copycat venue in the Western District of Texas (WDTX), which has seen a 700% increase in patent cases since 2016. The expansion in popularity of Texas district courts, especially for non-practicing entities (NPEs), makes the PTAB’s recent deference to such litigation under its NHK precedent all the more troubling given its AIA mandate.
Continue Reading Texas Plaintiffs More Likely to Side-Step PTAB?