Discretionary Consideration Bars ReturnMail Side-Step Via Intervenor

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.
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Stage of Litigation & Similarly Situated Litigants Now General Plastic Factors?

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.
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