Posts Tagged: "post grant procedures"

Times are changing at the Patent Trial and Appeal Board (PTAB)! Not only are there rumors that the Senate IP Subcommittee may be a matter of several weeks away from marking up the PREVAIL Act and voting it out of committee, but the United States Patent and Trademark Office (USPTO) has finally issued a Notice of Proposed Rulemaking (NPRM) relating to several changes to the Code of Federal Regulations as they pertain to patent challenges at the PTAB.

The U.S. Patent and Trademark Office (USPTO) today announced a Notice of Proposed Rulemaking (NPRM) that will be officially published in the Federal Register tomorrow and that addresses a subset of issues from the controversial April 2023 Advance Notice of Proposed Rulemaking (ANPRM). USPTO Director Kathi Vidal received criticism following the ANPRM, most notably from Congress. In a House IP Subcommittee meeting held last year, members of the Subcommittee expressed confusion about the ANPRM and suggested Vidal may have been exceeding her authority with some of the proposals.

It was a slow week for new patent filings at the Patent Trial and Appeal Board (PTAB) and in the district courts. This week saw only 18 new filings at the PTAB—one of which was a Post Grant Review, while the remaining were inter partes reviews (IPRs). Texas Instruments, Inc. continued challenging Greenthread LLC patents, filing four IPRs against  four patents (bringing the total number of IPRs Texas Instruments has filed up to seven). Amazon filed two IPRs against one Nokia Technologies Oy [associated with Nokia Corporation] patents; Apple filed five IPRs against three Resonant Systems Inc. (d/b/a RevelHMI) patents; and Micron filed two IPRs against two Yangtze memory Technologies Company Ltd.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB) on Friday that had denied institution of an inter partes review (IPR) requested by auto parts manufacturer, Mahle Behr Charleston, Inc. U.S. Patent No. RE47,494 E is owned by inventor Frank Amidio Catalano and covers “a device to prevent corrosion [in motor vehicle radiators] caused by electrolysis.” Mahle Behr requested IPR of the patent, arguing that a prior art reference called Godefroy anticipates and renders obvious certain claims.

In a nod to Mark Twain’s famous quote, the rumors of the death of IP Edge are greatly exaggerated. It appears the prolific NPE aggregator has either sold or transferred at least one portfolio (and potentially up to 40) to a new entity, Inferential Capital, LLC, which after hiring, has begun asserting again—more below.  On the stats, it was a slightly below average week at both the Patent Trial and Appeal Board (PTAB) and in the district courts. At the PTAB, there were 25 new patent filings, with one post-grant review and 24 inter partes reviews (IPR). 

It was a below-average week in both the Patent Trial and Appeal Board (PTAB) and in district courts this week for new patent filings, with only 27—all inter partes review (IPR)—at the PTAB and 47 new filings in district court…. The PTAB issued institution  decisions in 16 proceedings this week, denying institution in two IPRs (both on the merits) and ordering institution in 12 IPRs and two post-grant reviews (PGR). Instituted proceedings include two IPRs filed by Palo Alto Networks and Keysight Technologies challenging one Centripetal Networks patent; two IPRs filed by Samsung Electronics Co., challenging two Headwater Research Patents; and two IPRs filed by Motorola Solutions Inc., challenging two Sta Group LLC patents.

This week was an above-average one for patent filings in both the Patent Trial and Appeal Board (PTAB) and in district courts. The PTAB had two new post grant review (PGR) petitions and 39 new inter partes review (IPR) petitions, for a total of 41 new filings. And the district court also had heightened activity with 75 new filings.

As artificial intelligence (AI) systems become increasingly sophisticated and play a greater role in our society, questions surrounding patentability and inventorship have come to the forefront of intellectual property discourse. This is particularly so in the wake of Thaler v. Vidal, 43 F. 4th 1207, 1213 (Fed. Cir. 2022), cert denied, 143 S. Ct. 1783 (2023), in which the Federal Circuit held that “only a natural person can be an inventor, so AI cannot be.” The U.S. Patent and Trademark Office (USPTO) recently issued guidance aimed at addressing these concerns.

It was an average week all around with 31 new patent filings at the Patent Trial and Appeal Board (PTAB) – all inter partes reviews (IPRs) – and 67 new filings in district court. The bulk of this week’s new PTAB filings (a total of 19) were petitions challenging patents owned and asserted by Entropic Communications LLC [associated with SoftBank Group Corp.] (discussed further below). Other notable filings include petitions challenging patents held by Softex [associated with SoftBank Group Corp.], Dental Imaging Technologies [associated with Envista Holdings Corporation], Resonant Systems [d/b/a RevelHMI], Immersion Corp, and Dsm IP Assets BV [associated with DSM-Firmenich AG].

The U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) today that would allow practitioners who are not registered with the USPTO patent bar to act as lead counsel in proceedings before the Patent Trial and Appeal Board (PTAB). The Office has decided to propose that practitioners must still be represented by a registered practitioner, but to allow parties to “designate a non-registered practitioner as lead counsel and the registered practitioner as back-up counsel.”

It was a busy week at the Patent Trial and Appeal Board (PTAB) with 40 new filings—all inter partes review (IPR)—and an average week in the district courts with 51 new filings. The bulk of new PTAB filings can be attributed to a few petitioners challenging multiple patents held by one patent owner (and all asserted in parallel district court litigations). For example, Apple continued its filings against Carbyne Biometrics LLC [associated with Bjorn Markus Jakobsson] patents, adding another five petitions against four patents to the two filed earlier this month

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in CyWee Group Ltd. v. ZTE (USA), Inc. affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of CyWee’s 3D pointing device patent claims. In affirming the final written decision, the appellate court found that ZTE’s lack of adversarial nature in inter partes review (IPR) proceedings allowed LG Electronics, a joined party that was otherwise time-barred, to properly oppose CyWee’s motion to amend patent claims.

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today affirmed two decisions of the Patent Trial and Appeal Board (PTAB) that invalidated some claims and upheld others of a patent owned by Personal Genomics Taiwan, Inc. Based on the PTAB’s claim construction, which the CAFC agreed with, the decision held that Pacific Biosciences had failed to prove the prior art taught the limitation of the preamble phrase of claim 1 in one inter partes review, (IPR) but did prove a different prior art reference taught the limitation in the other proceeding.

Looking back over the final few weeks of 2023, patent filings were typical at the Patent Trial and Appeal Board (PTAB) and slightly above average in district courts, with the last weeks of the year seeing 68 district court complaints filed and 25 new PTAB petitions [December 11-17]; followed by 57 district court complaints filed and 29 new PTAB petitions [December 18-24]; and wrapped up with 24 district court complaints filed and 13 new PTAB petitions [December 25-31].