Posts Tagged: "SSL Service"

Supreme Court Refuses to Take SSL Services v. Cisco, Will Not Answer Question on Multiple Proceedings Rule at PTAB

In its petition for writ, SSL Services argued that the PTAB’s decision to institute the IPR incorrectly denied the application of 35 U.S.C. § 325(d), the statute governing multiple proceedings at the USPTO; giving the USPTO Director authority to reject a proceeding based on substantially similar prior art or arguments already presented to the agency in a validity review. While the PTAB laid out a multi-factor test for applying the multiple proceedings rule in a 2017 precedential decision in General Plastic v. Canon, SSL Services argued that this test is legally incorrect because the factors in that test do not find support in the statute. Further, the PTAB has applied Section 325(d) to bar the institution of IPRs in far less meritorious cases, including multiple cases where the asserted prior art had only been cited in the original prosecution of the patent and not a validity challenge after the patent had issued. This has resulted in a standard for applying Section 325(d) which is unworkable, SSL Services argued.

Supreme Court asked to apply Multiple Proceeding rule to end harassing validity challenges

The Multiple Proceedings rule has become the essence of uncertainty. What exactly does it mean? §325(d) gives the PTO Director the authority to refuse a petition when “the same or substantially the same prior art or arguments” were previously presented. For IPRs like this one to proceed despite numerous prior rulings in various fora upholding a patent’s validity is a travesty. The facts of this case underscore the mischief that can befall a patent owner under the current practice of the PTAB, enabled by the Federal Circuit… I recently wrote, “[t]he fight goes on to invalidate claims until the patent owner loses and the claims are invalidated.” But that is precisely what the § 325(d) Multiple-Proceedings rule was intended to prevent. And this needs to stop.