New Printed Publication Precedent/Informative Decisions

Yesterday, the Patent Trial & Appeal Board (PTAB) designated one new precedential case, and four informative decisions directed to printed publication analyses.

The four informative decisions stem from AIA trial proceedings, and address common fact patterns in assessing public accessibility of a printed publication.  Perhaps of most interest is the precedential decision, which outlines important distinctions between examinational and adjudicatory procedures before the agency.
Continue Reading PTAB Precedent Distinguishes Prima Facie Case from AIA Trial Practices

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?

Invalidity Counterclaims-In-Reply Will Not Trigger 35 U.S.C. § 315(a)

Congress created IPR to provide a “quick and cost effective alternative[ ] to litigation.”  To fulfill that role, Congress limited a party’s ability to seek an IPR after commencement of civil litigation in two ways: (1) under § 315(a), no IPR may be instituted if the challenger filed a civil action challenging the validity of a patent claim before filing the IPR petition, and (2) under § 315(b), an IPR may not be instituted on any petition filed more than one year after the petitioner (or a real party in interest or privy) was served with a patent infringement complaint.  These provisions are designed to control PTAB filings concurrent with civil complaints.

In a recent decision, the Northern District of California lamented that the statutory provisions permit a counterclaim of invalidity in a Reply. 315(a)(3). The Court interpreted such a counterclaim to be a “loophole.”
Continue Reading Declaratory Judgement Loophole at PTAB?

Expert Agency Shown Deference in Matters of Claim Scope

While IPR petitioners may only challenge patent claims based upon patents and printed publications (§§ 102 and 103), the PTAB trial record can be leveraged in parallel district court proceedings on related issues.  For example, PTAB fact findings on claim construction have been adopted by district courts on motions for summary judgment. And recently, a plaintiff in the District of Utah leveraged a PTAB finding to obtain a favorable outcome regarding indefiniteness on summary judgment.
Continue Reading Leveraging PTAB Records in District Court

Attorney Fees Available for Successful Defendant

As discussed back in September, district courts look to PTAB developments in assessing fee awards under 35 U.S.C. § 285. Recently the Eastern District of Michigan suggested that it could even find “exceptional” conduct at the PTAB as the sole basis for attorney fees.

Last week, the Southern District of California found that conduct substantially before the PTAB entitled a successful petitioner to attorney fees.
Continue Reading Court Leverages PTAB Result in Awarding Attorney Fees

CAFC Implies PTO Might Overlook Some 112 Issues

The Patent Trial & Appeal Board (PTAB) does not accept trial grounds under 35 U.S.C § 112 in Inter Partes Review.  This is because the IPR statutes only authorize trial grounds based on patents and printed publications.  The same has been true of patent reexamination for decades.

Last week, in Samsung Elec. Am., Inc. v. Prisua Eng’g Corp., the Federal Circuit considered whether the Board may cancel claims under 112 when such issues arise during trial.  The Court held that the PTAB may not cancel claims under 112, but instead, might, for certain types of claims, proceed to decide the prior art grounds.
Continue Reading Should the PTAB Determine Patentability of Unsupported Means-Plus-Function Claims?

New Tactics & Risks for Litigators

On Monday, I laid out my Top 5 PTAB cases of 2019 for PTAB Practitioners, focusing on those cases that changed day-to-day practices before the agency. Like Monday’s list, my Top 5 PTAB developments of 2019 for District Court Litigators will focus on those practical developments that will impact related litigation practices outside of the agency.

In 2019, there were a number developments of interest to litigators, from tricks to avoid the PTAB altogether, to new risks on fee awards and estoppel.  
Continue Reading Top 5 PTAB Developments of 2019 for District Court Litigators

PTAB 2019: A Year of New Precedent

There were a number of high profile developments at the Patent Trial & Appeal Board (PTAB) in 2019. New procedures for amending claims, Practice Guide updates to thwart parallel petition filings, a successful constitutional challenge based on the Appointments Clause, and another SCOTUS review of the PTAB appeal bar.  But, not all of these developments impact the day-to-day life of PTAB practitioners.  Of greater interest to PTAB practitioners are the developments that change the game for the average AIA trial, with this in mind, below are my Top 5 PTAB Practitioner Developments of 2019.
Continue Reading Top 5 PTAB Decisions of 2019 for PTAB Practitioners

Totality of Circumstances for Determining Public Accessibility

Over the years, the Patent Trial & Appeal Board had become panel dependent in assessing questions of public accessibility at institution.  Some panels seemed to require a showing of a likelihood of public accessibility to move forward, while others  required a more definitive showing.  Last spring, the Precedential Opinion Panel (POP) took up this growing rift in institution standards in Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039. Specifically,  the  POP addressed the requirements for establishing that a reference qualifies as a printed publication at the time of institution.

In its now precedential decision, the Board found that a more flexible approach was needed at institution.
Continue Reading PTAB POP Recalibrates Institution Analysis for Public Accessibility