Posts Tagged: "inter partes review"

In mid-November, consumer tech giant Apple filed a petition for writ of certiorari asking the U.S. Supreme Court to review the Federal Circuit’s decision to dismiss Apple’s appeal of unsuccessful inter partes review (IPR) challenges to the validity of several patents owned by Qualcomm. In that ruling, the Federal Circuit found that Apple’s choice to enter a patent licensing agreement with Qualcomm covering the patents-at-issue extinguished Article III standing as to Apple’s appeals from the Patent Trial and Appeal Board (PTAB). The question presented by Apple’s petition is: “Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.”

On December 28, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a pair of precedential decisions in appeals raised by chipmaker Intel. These appeals came from final written decisions in several inter partes review (IPR) proceedings challenging the validity of patent claims owned by rival firm Qualcomm. In both decisions, the Federal Circuit found that Intel satisfied Article III standing requirements for appealing from the Patent Trial and Appeal Board (PTAB). Standing has become a thorny issue that has plagued the Federal Circuit and PTAB.

Noteworthy 2021 developments at the Patent Trial and Appeal Board (PTAB) were primarily driven by oversight—via the United States Patent and Trademark Office (USPTO) Director, Supreme Court and Federal Circuit—rather than by new rules or policy of the agency. After the highly anticipated Arthrex decision fizzled at the Supreme Court, the most significant 2021 development may be former Director Iancu’s departure and legacy of decidedly pro-patent owner policies. That legacy is increasingly under attack. From the Biden administration’s nomination of a new director, to legislative proposals, to Congressional pushback on Section 314(a) discretionary denials of institution (especially as they relate to the Western District of Texas), to lawsuits challenging the practice as an Administrative Procedures Act violation, change is afoot. The coming year is sure to see recalibration of current PTAB practices.

As we finish up the year, the high district court termination rate continues; 85 terminations this week, including a fair amount of transfers, rounded out a normal PTAB week (29 filed) and a slightly depressed litigation week (with 50 new complaints). 

In written answers to Senators’ questions for the record submitted today by Kathi Vidal, President Joe Biden’s nominee for the next U.S. Patent and Trademark Office (USPTO) Director, Vidal said that she “support[s] the principle of” former USPTO Director Andrei Iancu’s Patent Eligibility Guidance for examiners, but stopped short of wholly endorsing the present guidance or committing to keeping it in place. Instead, Vidal said she would review the guidance in light of intervening case law and comments on the USPTO’s study on the state of patent eligibility jurisprudence to determine if updates are needed.   

Since the Supreme Court decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), there has been much discussion about the Court’s ruling mandating an option for users to request that the Director of the U.S. Patent and Trademark Office (USPTO) review Final Written Decisions of the Patent Trial and Appeal Board (PTAB) rendered in trials under the America Invents Act (AIA) on the validity of issued patents. But there has been little or no discussion on such Director’s review of PTAB decisions on institution of AIA trials.

Another 82 district court terminations this week was again high, though careful analysis has revealed that many of those cases were terminated voluntarily and refiled elsewhere. The Patent Trial and Appeal Board (PTAB) saw just 22 inter partes reviews (IPRs) this week; a few parties walked away from their patents, including Litl LLC [TRI Ventures, Inc.], after a challenge by Microsoft. District court was up this week to 94 patent filings, and the year looks poised to end with filings up substantially over years past. The Board again exercised its Fintiv muscles in an IPR with a case pending in the International Trade Commission (ITC), this one an entity funded by Techquity Captial Management. Other semiconductor patents asserted by NPEs went down on Final Written Decision in IPR, including one of the patents asserted by Vector Capital’s Monterey Research; it’s worth noting that the semiconductor companies have collectively spent a lot of time before the Board this year after the increase in NPE suits there this year.

Last week, patent owner Cellspin Soft filed a citation of supplemental authorities  with the U.S. Court of Appeals for the Federal Circuit (CAFC) asking the appellate court to either vacate or reverse an order from the U.S. Patent and Trademark Office (USPTO) denying Director review following a pair of inter partes review (IPR) proceedings conducted at the Patent Trial and Appeal Board (PTAB). Cellspin Soft is challenging the USPTO’s denial as invalid both under the Administrative Procedures Act (APA), as well as under the U.S. Supreme Court’s precedent in United States v. Arthrex (2021). Cellspin had filed requests seeking Director review of a pair of final written decisions invalidating all challenged claims of U.S. Patent No. 9258698, Automatic Media Upload for Publishing Data and Multimedia Content. It claims a machine-implemented method of media transfer utilizing a digital data capture device and a Bluetooth-enabled mobile device for publishing multimedia content automatically onto a website with minimal user intervention. Issued to Cellspin Soft in February 2016, the ‘698 patent has been asserted in infringement suits filed in U.S. district courts against several defendants including Panasonic, GoPro, Garmin, Nikon, Canon and Eastman Kodak.

The Patent Trial and Appeal Board (PTAB), created by the America Invents Act (AIA) just over 10 years ago, is the most electrifying lightning rod in the industry. As explained repeatedly by Members of Congress at the time the AIA was enacted, the purpose was to create a streamlined, less expensive, alternative administrative means to challenge the invalidity of issued patents. Sadly, with that being the stated purpose, the creation of the PTAB can be objectively characterized as nothing other than an abysmal failure. What has evolved is anything but streamlined, and certainly not inexpensive, even compared with district court litigation.

The U.S. Court of Appeals for the Federal Circuit ruled yesterday in two precedential decisions that Moderna’s challenges to decisions of the Patent Trial and Appeal Board (PTAB) in favor of Arbutus both failed. The CAFC dismissed one ruling for lack of standing and in the other said Moderna’s arguments that the PTAB erred in its finding that Arbutus’ patent was not unpatentable as obvious were unpersuasive.

With the Thanksgiving holiday, Patent Trial and Appeal Board (PTAB) (18) filings were down, but district court patent filings held steady at 62, with (again) an astounding number of closed or terminated cases (almost 100), many voluntarily dismissed without prejudice. As reported last week, in Google LLC v. EcoFactor, Inc. IPR, IPR2021-00982, the Board originally denied the petition, citing Fintiv and the statutory timing of International Trade Commission (ITC) investigations. Subsequently, though, the Board was made aware that the patent had been dropped from the ITC case, and reversed its earlier discretionary denial, thus instituting the case. It’s the first time I’m aware of that the Board has reversed a denial of institution, not on request for rehearing, but sua sponte after the discretionary reasons for denial evaporated (as they often do).

IPWatchdog has been told that Kathi Vidal, who is President Biden’s nominee for Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO), will have her confirmation hearing on Wednesday, December 1. As of the time of publication, the Senate Judiciary Committee, to which the Vidal nomination has been referred, lists a confirmation hearing for the full Committee at 10am on December 1, but provides no additional information. It is believed Vidal will share the hearing with several nominees for federal judicial positions.

Happy Holidays! Thanksgiving has come and gone. A light week last week headed into the holidays saw 20 Patent Trial and Appeal Board filings (two more against MemoryWeb, and a lot of one-offs, including one by gaming company Zynga against IGT). District courts saw 58 patent filings, with a whopping 115 terminations again this week—at least a few attributable to transfers, but many, many more attributable to file-and-settle settlements headed into the end of a very lucrative year in monetization, as quarterly statement-minded licensing entities look to wrap things up before the holidays.

District court patent filings this week remained slightly elevated, at 78, with a fair number of Rothschild, Raymond Anthony Joao, and Jeffrey Gross entities filings complaints; but oddly—after their explosion of new litigations the past two weeks—there was not a single IP Edge case to speak of. The Patent Trial and Appeal Board (PTAB), for its part, was up slightly too, with 37 new petitions (one post grant review and 36 inter partes reviews). Speaking of Jeffrey Gross, though it consists of two patents issued in 2013, the Jeffrey Gross-run Auth Token LLC appears to have waited until the sunset of covered business method (CBM) petitions to turn around and slap virtually all of the nation’s banks, credit card companies, and some financiers with a lawsuit over two pretty identical point-of-sale authentication patents. The cases now include Mastercard, Visa, M&T Bank, PNC Bank, Regions Bank, TD Bank, Trust Financial, and US Bancorp (US Bank), among the 32 defendants thus far.  But the real action was between the Federal Circuit and Judge Albright, as the words and rulings of each become increasingly confrontational toward the other.