Posts Tagged: "America Invents Act"

On June 7, the U.S. Patent and Trademark Office’s (USPTO’s) Director’s Blog published a post authored by USPTO Director Kathi Vidal announcing that the agency is now receiving applications from inventors seeking free legal assistance to bring ex parte appeals of patent examiner rejections to the Patent Trial and Appeal Board (PTAB). While Vidal’s announcement is certainly welcome news to many inventors who are in financial need, it fails to address larger issues faced by inventors at the PTAB that have been voiced by members of Congress and the inventor community alike in recent months.

United States Patent and Trademark Office (USPTO) Director Kathi Vidal has intervened in two Patent Trial and Appeal Board (PTAB) cases that have caused much controversy in the patent world. Vidal yesterday granted Director Review in both OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, both of which have been the subject of scrutiny by members of Congress and patent practitioners, since the petitioners involved were incorporated after Intel was found to have infringed VLSI’s patents in district court and have no discernable business operations beyond challenging VLSI’s patent claims. The two entities’ petitions were also nearly identical to inter partes review (IPR) petitions previously filed by Intel that had been rejected by the USPTO.

Following a late April request by Senators Thom Tillis (R-NC) and Mazie Hirono (D-HI)  to then newly-confirmed United States Patent and Trademark Office (USPTO) Director Kathi Vidal asking her to respond to a number of questions surrounding abuse of the inter partes review (IPR) system, Vidal last week sent a letter explaining she is working on the problem. The senators’ April letter had expressed concern over Patent Trial and Appeal Board (PTAB) decisions to institute inter partes review (IPR) proceedings in OpenSky Industries, LLC v. VLSI Technology LLC and Patent Quality Assurance, LLC v. VLSI Technology LLC. “The facts and circumstances around these proceedings suggest petitioners OpenSky Industries, LLC (OpenSky) and Patent Quality Assurance, LLC (PQA) brought the proceedings to manipulate the U.S. Patent and Trademark Office (USPTO) for their own financial gain,” explained the letter.

In a blog post on May 24, just over a month after being sworn in, Director Kathi Vidal stated that one of her priorities is to “accelerate change and communications by adopting interim processes and procedures while [the USPTO] work[s] to finalize.”  A mere two days later, the U.S. Patent and Trademark Office (USPTO) issued one such interim process for Patent Trial and Appeal Board (PTAB) decision circulation and internal PTAB review. In addition to speed, this interim process is consistent with Director Vidal’s emphasis on transparency by ensuring that the parties to a proceeding and the public know the identity of the decision-makers. Nevertheless, as discussed further in this article, Director Vidal and PTAB Executive Management must be proactive in identifying areas for further publicly-issued guidance. Otherwise, consistency in PTAB decision-making is likely to suffer.

Senators Mazie K. Hirono (D-HI) and Thom Tillis (R-NC) sent a letter yesterday to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal to express their concern over the Patent Trial and Appeal Board (PTAB) decisions to institute inter partes review (IPR) proceedings in OpenSky Industries, LLC v. VLSI Technology LLC and Patent Quality Assurance, LLC v. VLSI Technology LLC. “The facts and circumstances around these proceedings suggest petitioners OpenSky Industries, LLC (OpenSky) and Patent Quality Assurance, LLC (PQA) brought the proceedings to manipulate the U.S. Patent and Trademark Office (USPTO) for their own financial gain,” explains the letter.

Under the U.S. Constitution’s Appointments Clause, “Officers of the United States” generally are required to be nominated by the President “by and with the Advice and Consent of the Senate.”  This rule applies equally to the Director of the U.S. Patent and Trademark Office (USPTO), who has an important executive role with political accountability and therefore, by statute, must be Presidentially-Appointed and Senate-Confirmed (PAS). The Vacancies Reform Act of 1998 (VRA) provides that the President (and only the President) may direct an “acting” official to temporarily perform the functions and duties of the vacant PAS office. The VRA states that its mechanisms are “exclusive” of all other mechanisms for temporarily filling a vacant PAS office. On several occasions since 2013, including most recently with Commissioner Andrew Hirshfeld, the USPTO has adopted a modality for filling a vacancy in the office of the Director, not with an Acting Director as the VRA requires, but with a non-PAS official “designated” to “perform the functions and duties” of the Director.

The New York Times Editorial Board over the weekend penned an op-ed charging that the U.S. Patent and Trademark Office (USPTO) has “devolved into a backwater office that large corporations game, politicians ignore and average citizens are wholly excluded from.” The piece calls for an overhaul of the U.S. patent system and for new USPTO Director Kathi Vidal and Congress to “seize the opportunity…to modernize and fortify the patent system.” It includes input from Priti Krishtel of the Initiative for Medicines, Access and Knowledge (I-MAK)—which recently has been the subject of scrutiny by pro-patent lawmakers like Senator Thom Tillis (R-NC)—and Charles Duan, who has testified to Congress that patents deter genetic research and “bully and suppress true innovators.”

Last night, the Chairman and the Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property published an op-ed in The Hill on the important role the Patent Trial and Appeal Board (PTAB) plays in the U.S. patent ecosystem, and expressed their commitment to strong patent rights as a necessity for American innovation to flourish. “In order to ensure America’s continued dominance in all areas of innovation, we must have strong patent rights,” Senator Patrick Leahy (D-VT) and Senator Thom Tillis (R-NC) wrote. “However, for our patent rights to truly be strong, they have to be based on high-quality patents… The Patent Trial and Appeal Board (PTAB) plays a critical role in this process and is a necessary backstop to invalidate truly low-quality patents that do not represent true innovation and never should have been issued.”

All things in Washington are driven by money, media and votes. If you can deliver one or more of those things, you will get the results you want. Engaging in politics with this in mind is key to fixing the broken patent system by passing HR 5874, the Restoring American Leadership in Innovation Act (RALIA). Since no mortal can compete with Big Tech’s big bucks and their control of social media, and the media in general, the only lever remaining is delivering votes back home, or more importantly, delivering those votes to candidates who commit to supporting HR 5874.

Recently, the U.S. Court of Appeals for the Federal Circuit (CAFC) further explained the “on-sale” bar in Junker v. Medical Components, Inc., Case No. 2021-1649 (Feb. 10, 2022). As previously reported here, the case hinged on whether a letter between Larry Junker’s business partner and Boston Scientific Corporation (BSC) was a “commercial offer for sale” before the one-year grace period took effect. The CAFC held that all necessary terms for a commercial offer were present in the letter, and therefore, the letter qualified as a commercial offer for sale invalidating Junker’s patent.

On March 21, the U.S. Supreme Court issued an order list denying petitions for writs of certiorari in a pair of patent cases that had worked their way up to the nation’s highest court. In denying these petitions, the Supreme Court turns down Intel Corporation’s challenge to the NHK-Fintiv discretionary denial framework at the Patent Trial and Appeal Board (PTAB), while the Court also dismissed an appeal asking whether a patent infringement case can be determined to be exceptional for purposes of awarding attorney’s fees without a finding that the patent owner engaged in litigation misconduct.

Administrative patent judges of the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB), who are inferior officers under the appointments clause, can overrule validity decisions of U.S. district court judges, who are Officers of the United States. District court judges with no training or experience in technology construe patent claims and decide validity. A political appointee can overrule PTAB judges’ validity decisions…. This article proposes a new system of patent justice. Major issues during patent litigation would be decided at the trial level ONLY ONCE, and by the government entity best positioned to decide the issue.

The CAFC on Friday, February 11, denied a petition for writ of mandamus filed by B.E. Technology in November of last year asking the court to intervene to “prevent an unconstitutional deprivation of B.E.’s property rights in the onslaught of IPR proceedings that have been brought to challenge the validity of its most critical patents.” B.E. has been embroiled in litigation with big tech companies like Facebook, Twitter and Google for close to a decade now. The CAFC said in its denial that “B.E. has not shown a clear right to a different result here by relying primarily on a self-published article that is outside of the record.”

The last day of PTAB Masters™ 2022 featured sessions on dealing with parallel litigation at the International Trade Commission (ITC) and district courts in Patent Trial and Appeal Board (PTAB) proceedings; life sciences and inter partes review (IPR); and the future of the PTAB. On the latter topic, speakers contemplated what lies in wait for the U.S. Patent and Trademark Office (USPTO) Director nominee, Kathi Vidal, who is likely to be confirmed, as well as how certain the Restoring America Invents Act is to be passed, and what changes it may include.