Posts Tagged: "reexamination"

Salesforce Reexams Vacated Because It Was Real-Party-in-Interest in RPX IPR

One of the most intriguing, and frankly long overdue, reforms the United States Patent and Trademark Office (USPTO) needs to consider is putting an end to the practice of for-profit entities like Unified Patents and RPX filing petitions challenging a patent. This practice has recently been called into question by the USPTO through an Advance Notice of Proposed Rulemaking (ANPRM) published in the Federal Register. The ANPRM, among many other things, raises the question whether the Office should discretionarily deny post grant proceedings filed by for-profit, non-competitive entities that in essence seek to shield actual real-parties-in-interest (RPIs) and privies from the statutory estoppel provisions contained within the America Invents Act (AIA). And two recent decisions from the Office of Patent Legal Administration (OPLA) provide even more hope that the USPTO will take a reasonable approach going forward when it comes to RPIs.

Post-Vivint Patent Office Treatment of Ex Parte Reexaminations After Non-Instituted IPRs

Given the various ways the Patent Trial and Appeal Board (PTAB) can exercise discretion to deny institution of an inter partes review (IPR) petition (and the corresponding non?appealability of those decisions), ex parte reexamination is becoming an attractive option to challenge patent validity following a decision not to institute. Because a later filed ex parte reexamination is often viewed as a “second bite at the apple,” there were questions as to how the U.S. Patent and Trademark Office (USPTO) should treat these second attempts at invalidating a patent. For IPRs, the PTAB has used several bases for discretionary denial of a later-filed IPR, but those bases were not being applied to follow-on ex parte reexamination requests. However, in In re Vivint, the Federal Circuit held that the USPTO has the authority to discretionarily deny an ex parte reexamination request under 35 U.S.C. § 325(d), i.e., if “the same or substantially the same prior art or arguments previously were presented to the Office.”

Salesforce’s Abusive Post Grant Tactics Demonstrate USPTO Dysfunction

The issue of who is the real party in interest in an inter partes review (IPR) filed at the Patent Trial and Appeal Board (PTAB) is a particularly thorny matter. When IPRs were introduced, patent owners were assured that there would be a meaningful estoppel provision, which would prevent those who lost IPRs from challenging the same patents in later proceedings. There was also a statute of limitations, another thorny matter, that would prevent challengers from filing an IPR more than one year after they were sued. The long and short of it is this—real party in interest law and statute of limitations law, which apply in every other legal setting, are interpreted vastly differently at the PTAB. For example, with the statute of limitations, if you are barred from bringing a challenge and someone else brings a challenge, then suddenly you are able to join the challenge, despite being barred. But wait—there is more. If that first party that was not barred settles and leaves the case and the barred party is the only challenger remaining, well the case must go on. A legal absurdity.

Unified Report: Reexaminations Double; Samsung, Apple and Google Dominate PTAB Filings

Reexaminations continue to gain favor, seeing a 47% increase over last year; the Patent Trial and Appeal Board (PTAB) sees fewer filings; and filings by non-practicing entities (NPEs) rose by 4%, according to Unified Patents’ 2021 Patent Dispute Report: Year in Review, published earlier this week. The PTAB saw a nearly 12% decline in filings from the previous year, whereas district court proceedings remained unchanged, said the report. It added: “Operating companies filed 5.5% less cases in district court and over 10% less filings at the PTAB.”

CAFC Issues Modified Order on Mojave’s Motion to Substitute in Reexam Proceeding Over Crocs’ Objections

On April 21, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a modified, precedential order reversing the Patent Trial and Appeal Board’s (PTAB’s or Board’s) decision to deny U.S.A. Dawgs and Mojave’s motion to substitute, holding that “the Board erred in not substituting Mojave for U.S.A. Dawgs as the third-party requester during the inter partes reexamination.” The original order was issued in February. Judge O’Malley dissented to the latest order.