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Posts Tagged: "IPR"

PTAB Masters™ 2022, Day Three: Iancu Slams Repeat Proceedings, Panelists Opine on Breyer Retirement

The third day of IPWatchdog’s PTAB Masters™ 2022 featured more from former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, as well as panels covering topics such as avoiding obviousness mistakes, appellate strategies from the Patent Trial and Appeal Board (PTAB) and other intricacies of PTAB practice from the experts. Panelists this afternoon also weighed in on today’s announcement that Justice Stephen Breyer will retire from the Supreme Court, opening the door for Biden to appoint a replacement.

On Day Two of PTAB Masters™ 2022, Panelists Dig into Data Showing Fintiv Denials May Be Dead for Texas Cases

The first panel of Tuesday’s PTAB Masters™ 2022, titled “Discretionary Denials: Has the WDTX Been Neutered?”, presented data that reveals the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) seemingly stopped citing Fintiv as a reason to discretionarily deny inter partes review (IPR) proceedings for cases with parallel litigation in the Western or Eastern Districts of Texas (WD of TX/ ED of TX) during the last four months of 2021. While the PTAB issued a larger number of institution decisions overall in those months compared with previous months, and a larger number of cases citing Fintiv, there was also a relatively low number of cases across all jurisdictions in which discretion to deny was applied based on the Fintiv analysis.

Day One of PTAB Masters™ 2022: Tillis and Iancu Chime in on PTAB and Patent System Problems

The first day of IPWatchdog’s PTAB Masters™ 2022 program featured a welcome from Senator Thom Tillis (R-NC), Ranking Member of the Senate Judiciary Committee’s Subcommittee on Intellectual Property, who told attendees that Congress should consider codifying some of the reforms made by former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu in order to better avoid “gamesmanship” at the Patent Trial and Appeal Board. Tillis specifically called out entities like OpenSky Industries, who last December petitioned the PTAB to institute an IPR proceeding challenging claims from one of two patents involved in VLSI Technologies’ $2.175 billion jury verdict for patent infringement against Intel, which was handed down in March 2021 in the Western District of Texas.

Top Issues for the U.S. Patent and Trademark Office in 2022

Incoming U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s answers to Senators’ written questions following her recent confirmation hearing provide reasons for hope to those concerned about the current state of the patent system. Vidal’s responses emphasize three priorities: strengthening patents and trademarks, ensuring that U.S. intellectual property is protected abroad, and expanding the reach of the patent system to underrepresented groups. This article focuses on five important issues that any new USPTO Director will need to address—and looks for clues as to how she may approach them.

Patent Filings Round-up: Claims from $25 Million Verdict Held Unpatentable After Stay Denied; Panel Denies IPR Over Lengthy Reexam History

It was a relatively consistent week in terms of overall patent filings, with 24 inter partes reviews (IPRs) and two post grant reviews (PGRs) and 77 new district court complaints. The district court saw a couple of new higher-profile cases involving Google, one by small company, Flypsi, and another a declaratory judgment (DJ) action against small smart thermostat maker (and aggressive enforcer), Ecofactor.

SCOTUS Denials of Apple and Mylan Petitions Unlikely to End Challenges to PTAB NHK/Fintiv Framework

Earlier this week, the U.S. Supreme Court issued an order list indicating it had denied petitions for writs of certiorari in two cases challenging the NHK/Fintiv framework developed by the Patent Trial and Appeal Board (PTAB) for discretionary denials of validity trials under the America Invents Act (AIA). In denying petitions from consumer tech giant Apple and generic pharmaceutical firm Mylan Laboratories, SCOTUS has ended the latest challenge to the PTAB’s NHK/Fintiv rule, which has raised the ire of many entities who have found the PTAB to be a very valuable backdoor towards patent invalidation outside of U.S. district court. Both petitions essentially asked the Court whether the PTAB’s application of its NHK/Fintiv rule passes muster under precepts of U.S. administrative or due process law.

Patent Filings Roundup: New Litigation-Funded Campaign; PTAB Denies Under NHK-Fintiv Despite Sotera(ish) Stipulation

Apologies for missing last week, which was a light, short holiday recap—nothing much of note beyond less-than-average filings, given the holidays. This week was back to the new normal at the Board, with 24 petitions—one post grant review (PGR) and 23 inter partes reviews (IPRs)—and 50 new filings, with fewer than usual file-and-settle suits (as it’s the beginning of a quarter, year, and month). Another unusually high 92 terminations are mostly due to the end of file-and-settle suits from last year. A few new campaigns of note below, more discretionary denials, and a bunch of IPR denials filed against a German microbattery company round out the week.

Amici for Apple Tell SCOTUS Federal Circuit’s Article III Standing Ruling Violates Precedent, Upsets Congressional Intent in Enacting AIA Trials

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.”

Tillis Backs Vidal for USPTO Head, Dubbing Her a ‘Visionary Leader’

Senator Thom Tillis has come out on the record in support of Kathi Vidal to be the next Director of the U.S. Patent and Trademark Office (USPTO), on the eve of a Senate Judiciary Committee vote on her confirmation. Despite recent scrutiny of her ties to big tech and Silicon Valley, Tillis in a statement today said that he was satisfied with Vidal’s responses to his “tough questions” during the confirmation hearing process and feels he has received her commitment that she will continue the reforms implemented by former USPTO Director Andrei Iancu.

Federal Circuit Says Intel Can Appeal Qualcomm IPRs Despite Lack of Infringement Suit

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.

Patent Trial and Appeal Board Year in Review: The Top Five PTAB Developments of 2021

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.

Patent Filings Roundup: Joao Entity Sues Nonprofits, Pediatricians; Fortress Entity Sues LG on TVs in ED Tex; Vector Capital-funded Semi Campaign Runs into the PTAB

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 Responses to Senators’ Questions, Vidal Supports Iancu’s 101 Guidance ‘In Principle’

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.   

The USPTO Must Allow Director’s Review of PTAB Decisions on Institution of AIA Trials

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.

Patent Filings Roundup: Cal Tech Sues Samsung After $1 Billion Apple Verdict; Joao Entity Sues UT’s Health System; Intel Loses Six Against Bill Chu’s Acqis LLC

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.