Patent Filings Roundup: Board Says ‘Nein’ to German Company’s IPR; A PTAB Footnote to the Fortress/Intel Fight

Per the usual slow January, it was a light week at both the Patent Trial and Appeal Board (PTAB) and in the district courts. At the PTAB, parties filed just 16 petitions—three post grant reviews (PGRs) (including a Regeneron filing) and 13 inter partes reviews (IPRs), which, if memory serves, is the lowest of the past 12 months. In district court, just 34 filings played out, with the noted absence (seemingly weekly at this point) of any new WSOU suits.  And, as mentioned previously, there’s still no evidence that Uniloc is moving to correct their filings before the USPTO to include the necessary party, Fortress, as their exclusive licensee.

The VLSI/Fortress v. Intel Saga Continues: As the battle over inter-district transfers ping-pongs between the Federal Circuit and Judge Albright’s court and the Wilmer Hale/Bill Lee versus Irell Manella/Morgan Chu battle of the greats rages on, a somewhat tragic note in the saga played out at the Board: The one IPR instituted (more than a dozen others were denied under Fintiv, mostly based on trial dates that haven’t materialized) resulted in the sole claim challenged cancelled, at least suggesting that, had the Board looked to the merits on any of the other dozen, the possibly-imminent, possibly-delayed trial would have been streamlined.

Board Says “Nein” to German Company’s Freedom-to-Operate IPRs: Maybe something was lost in translation. When German companies Metall Zug AG and Haag-Streit AG filed an IPR against Carl Zeiss Meditech AG, they exceeded the word count and asked permission to exceed it—that permission was denied in March of last year. To be fair, the technology the two companies compete over—highly technical optical imaging equipment for the matching of artificial interocular lenses—is complex and math-heavy, requiring a detailed discussion of Fourier transforms, lasers, and light physics. While that first IPR—as revised and pared down—was instituted and is currently pending, the companies filed another seven IPR petitions, three on another patent, and four more on this one. The Board denied the three, and this week exercised their discretion under General Plastics to deny all four of the newly filed IPRs, reasoning that the petitioners had done very little to justify the additional filings other than noting they challenged different claims on different grounds.