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Posts Tagged: "Patent Trial and Appeal Board"

Senate Judiciary Committee Sends Vidal and Stark Nominations to Senate Floor

Today, the full Senate Judiciary Committee officially voted to confirm the nomination of Katherine Vidal by a vote of 17-5 for Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO). The Committee also voted 16-6 in favor of Judge Leonard Stark, President Biden’s nominee to replace U.S. Court of Appeals for the Federal Circuit Judge Kathleen O’Malley, who announced on July 27, 2021, that she will retire, leaving a vacancy on the court as of March 11, 2022. The hearing was originally scheduled to take place last week, but was postponed to allow members of the committee to attend the funeral of former Senator Johnny Isakson (R-GA) on January 6.

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.”

New Vision Gaming’s Motion for Reconsideration Highlights Issues with Arthrex USPTO Director Review Mandate

In the last few weeks of 2021, patent owner New Vision Gaming & Development filed a motion for reconsideration  of a remand order issued by the U.S. Court of Appeals for the Federal Circuit. That ruling, entered in early December, remanded New Vision Gaming’s appeal of covered business method (CBM) review proceedings back to the Patent Trial and Appeal Board (PTAB) “for the limited purpose” of requesting Director review of the CBM review decisions under the U.S. Supreme Court’s Arthrex standard. New Vision Gaming’s recent motion for reconsideration raises several issues regarding the U.S. Patent and Trademark Office’s (USPTO’s) implementation of Director reviews under Arthrex, making this particular case an important one to follow through at least early 2022.

Unified Report: Reexaminations Double; Samsung, Apple and Google Dominate PTAB Filings

Reexaminations continue to gain favor, seeing a 47% increase over last year; the Patent Trial and Appeal Board (PTAB) sees fewer filings; and filings by non-practicing entities (NPEs) rose by 4%, according to Unified Patents’ 2021 Patent Dispute Report: Year in Review, published earlier this week. The PTAB saw a nearly 12% decline in filings from the previous year, whereas district court proceedings remained unchanged, said the report. It added: “Operating companies filed 5.5% less cases in district court and over 10% less filings at the PTAB.”

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.

Federal Circuit Says PTAB Erred by Accepting Stipulation of Parties

According to Judge Taranto, when the issue of indefiniteness of claims is raised in an IPR the challenge is not merely a contest between the petitioner and the patent owner, but rather protects the interests of the judicial system, the agency, and the public. Therefore, the Board should have conducted a prior-art analysis without any consideration of or deference to the stipulation of the parties, and entry of a final written decision on the merits absent such an independent consideration was inappropriate. The Board should have determined if there is indefiniteness and if “such indefiniteness renders it impossible to adjudicate the prior-art challenge on its merits, then the Board should conclude that it is impossible to reach a decision on the merits of the challenge and so state in its decision.”

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.

CAFC Upholds PTAB Ruling for Corcept, Finding Teva Failed to Show a Reasonable Expectation of Success

The U.S. Court of Appeals for the Federal Circuit in a precedential decision yesterday affirmed a Patent Trial and Appeal Board (PTAB) decision that Teva Pharmaceuticals had failed to prove Corcept Therapuetics’ U.S. Patent No. 10,195,214 would have been obvious. The patent covers methods of treating Cushing’s syndrome, a disease caused by excessive levels of the naturally occurring steroid hormone, cortisol. Chief Judge Moore authored the opinion.

The PTAB Desperately Needs Reform, Not Preservation

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.