Last Friday the Patent Trial & Appeal Board (PTAB) added to its list of precedential cases. The new precedent clarifies when RPI disputes will be considered by the Board, what factors will be considered for petitions lodged by member organizations, and whether joinder can be
Once upon a time, the Patent Trial & Appeal Board (PTAB) accepted AIA trial petitions that attacked a subject patent in a serial fashion. That is, typically, a group of defendants of a multi-defendant suit would stagger their filings against a subject patent. For example, Company A would file first, after seeing the Patent Owner’s Preliminary Response to Company A, Company B would file, and then after the Board issued its Decision to Institute relative to Company A’s petition, Company C would file. In this way, each succeeding petition could improve over the first filed petition and increase the likelihood that the patent would be cancelled. This was not fair, and to the agency’s credit, once this strategy became clear, it was shut down.
With the issuance of the General Plastics decision, as any practitioner would attest, a serial petition strategy has become near impossible. But that hasn’t stopped PTAB critics from claiming the practice somehow still exists.
Continue Reading PTAB Debunks Multiple Petition Criticisms in Newly Released Statistics
Last fall, I explained that the Patent Trial & Appeal Board (PTAB) was considering the relationship of government contractors in Court of Federal Claim (COFC) patent disputes against the U.S. government. That is, given the typical existence of a contract between the government and the contractor, what such a relationship meant for RPI/privy determinations.
Perhaps not surprisingly, the PTAB has found privity to exist between the government and its contractors in common contractual scenarios. For example, where the contractor intervenes in the COFC matter. And that the later AIA petition of the contractor (outside the 315(b) window of the government) is barred.
Perhaps more surprisingly, however, is the discretionary consideration under 314(a) relative to ReturnMail that would effectively close the PTAB to patent disputes at the COFC.
Continue Reading PTAB Closed to Court of Federal Claims Matters?
Back in January, I identified the Board’s expanding view of 314(a) discretion as the most significant development of 2018. In that earlier post, I predicted that one such 314(a)/325(d) case, NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., would be designated precedential in 2019.
Yesterday, the PTAB delivered on my prediction.
Continue Reading New PTAB Precedent: 314(a) Not Just for Follow-On Petitions
As I have mentioned on a few CLE panels as of late, the recent changes to the Patent Trial & Appeal Board’s (PTAB) Trial Practice Guide invite parties to suggest additional General Plastic factors. These factors are applied by the Board to determine whether to exercise its discretion to deny institution under § 314(a) in applicable cases. With the efficacy of 325(d) now muted after SAS (given it’s ground-by-ground based application), the potential “kill shot” offered by 314(a) has attracted more attention in recent Patent Owner Preliminary Responses.
With the new Trial Guide update barely a month old, the Board has already begun to expand its General Plastic factors. Two September decisions highlight the degree to which the Board may be more open to considering parallel litigation dynamics as additional factors.
Continue Reading PTAB Expands Equitable Considerations to Deny AIA Trial Petitions