Patent Filings Roundup: Funded-NPE Semiconductor Shotgun Petition Backfires; APJ Bucks Board on Fintiv; IP Edge Files Dozens

Happy Memorial Day week. It was a light week at the Patent Trial and Appeal Board with 20 filings – 18 inter partes reviews (IPRs) and two post grant reviews (PGRs) – but another heavy one for patent filings in district court (96 complaints), driven primarily by a deluge of new IP Edge complaints (I didn’t count it out, but it looks like more than 50) and a single new massive Humira/Abbvie patent-thicket complaint. The Board issued another five or so Fintiv denials, including one over an International Trade Commission (ITC) date, and only a handful of merits denials; it includes one, listed below, where the Board found merit to some minority of the challenged grounds but nonetheless denied after SAS Institute, Inc. v. Iancu for efficiency. The Magnetar Capital-backed Neodron made it to Markman and settled and then filed another round of enforcement actions against new defendants; and there appears to be burgeoning disagreement at the Board itself in just how precedential the Fintiv analyses are, and whether the Board is overreaching its discretion and misreading its own precedent.

Shotgun Effect Backfires in Semiconductor Petition: The Board this week exercised its discretion to deny a petition against a Vector-Capital-backed semiconductor non-practicing entity’s (NPE’s) patent, U.S. 6,680,516, where they found merit to some of the petitioner ,Nanya’s, arguments, but found far more to critique among a panoply of grounds raised.

You have to feel for Nanya. Complex subject matter and 41 claims meant they had to attempt to cover all their bases; but in doing so, they seem to have overplayed their hands. Add to that that they relied on (maybe) applicant admitted prior art, and all the Director Iancu-era-memo-baggage that came along with that, and the Board, despite finding merit in some of the grounds, was put in a tight spot of instituting after SAS a case where the majority of the grounds would likely fail, but some had merit. It makes sense practically, but you have to admit it’s an odd look­—the agency who granted a patent admitting there are meritorious validity issues with it, but nonetheless refusing to reconsider a paid-for request by another. The IPR, 2021-00171, is on a patent asserted against Qualcomm and others in the district court, and is part of the litigation-funded Vector Capital campaign. Qualcomm itself was instituted on petitions on some of the patents here earlier this year, including one on this patent. The same week, Monterey sued Broadcom, adding another semiconductor company to the ongoing campaign.

PTAB APJ Disagrees on Fintiv a Third Time: In another Fintiv denial, APJ Crumbley has for the third time disagreed with the panel’s precedential approach to weighing the Fintiv factors. See TA Instruments-Waters LLC et al v. Malvern Panalytical Inc., IPR2021-00211, Paper 8 (May 27, 2021) (Crumbley, J., concurring). Previously, APJ Crumbley has staked out a far different approach that might not always affect the outcome; nonetheless, he’s made a point of highlighting his disagreements with others’s approach to the discretionary denial issue and the fact that the precedential order in Fintiv introduced, but did not apply, the factors. Cisco Systems, Inc. v. Ramot at Tel Aviv University Ltd., IPR2020-00122, Paper 15 (May 15, 2020) (Crumbley, J., dissenting); GlobalFoundries Inc. v. UNM Rainforest Innovations f/k/a STC.UNM, IPR2020-00984, Paper 11 (Dec. 9, 2020) (Crumbley, J., concurring).  His original dissent noted:

The majority’s decision […] risks focusing only on the “faster” aspect of this goal, while sacrificing the “more efficient” aspect. In other words, the majority defers to a district court proceeding merely because it is currently scheduled to be faster than this inter partes review would be, without considering whether the Board may nevertheless be a more efficient venue.

[…] The majority’s analysis primarily focuses on an application of factors set forth in Apple Inc. v. Fintiv, Inc., […] an order the Director recently designated as precedential. The “Fintiv factors” are precedential to the extent they identify considerations that should be relevant to the Board’s decision whether to deny institution under 35 U.S.C. § 314(a) in light of a co-pending district court proceeding. But I also note that Fintiv was an interlocutory order requesting further briefing from the parties on its factors; the panel did not actually apply those factors in the precedential order and there is no precedential “holding,” in the conventional sense of legal precedent. Therefore, Fintiv does not control how we should apply its factors to the facts of this case, nor does it instruct us how to weigh the factors. And it is in this application and weighing of the factors that I disagree with the majority’s approach.[citations and footnote omitted.]

The case there was one of three petitions denied over an upcoming District of Delaware trial date.

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