Posts Tagged: "Patent Trial and Appeal Board"

OpenSky Attorney Emails Expose the Seedy Underbelly of PTAB Practice

The Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) has been a lightning rod since it was established on September 16, 2012. In recent years, it is undeniable that the PTAB has become fairer, although there are still obvious improvements that can and should be made. Unfortunately, the fact that the tribunal has become more even handed and offers more meaningful process and procedural protections to patent owners does not mean that the overall PTAB process is in any way fair to patent owners, as recently evidenced by an astonishing offer to throw a case, including tanking efforts of third parties seeking to join, if the patent owner paid up.

Patent Filings Roundup: Joao Sub Hauls Shipping Industry into Albright’s Court; IP Investments Sub Targets Realty Companies with IV Patents

With 69 new district court patent filings and 24 Patent Trial and Appeal Board (PTAB) challenges (all inter partes reviews), it was a now-routine end-of-the-month filing spree for IP Edge subsidiaries, with 23 new complaints by such entities. The PTAB dockets continue to be dominated by cases against litigation-funded entities like Magentar Capital’s Scramoge, Fortress IP’s VLSI and Jawbone, and WSOU, plus the seemingly now-regular trickle of cases between Apple and Ericsson. Big-ticket assertor Agis Software disclaimed challenged claims in an IPR brought by Google and Samsung, thus cancelling the claims; and some ANDA-related litigation kicked off before various district courts.

CAFC Reversal Allows APA Claim Against USPTO to Proceed

Last week, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the U.S.  District Court for the Eastern District of Virginia affirming the United States Patent and Trademark Office (USPTO) Director’s vacatur of ex parte reexamination proceedings based on the estoppel provision of the inter partes review (IPR) regime. In 2015, Vivint, Inc. sued for infringement of three patents, U.S. Patent Nos. 6,147,601 (the ‘601 patent), 6,462,654 (the ‘654 patent), and 6,535,123 (the ‘123 patent). In response, filed several petitions for IPR, which culminated in three final written decisions in 2017. On review, the CAFC affirmed the decision of the Patent Trial and Appeal Board (PTAB) that had failed to satisfy its burden of proving unpatentable claim 19 of the ‘601 patent, claim 18 of the ‘123 patent and claims 17,18, 22, 25, and 28 of the ‘654 patent.

When it Comes to Eukaryotic Cells, Broad Institute Has Priority to CRISPR Gene Editing Tech, Says PTAB

The U.S. Patent and Trademark Office (USPTO) ruled in an interference proceeding yesterday that The Broad Institute, Inc., Massachusetts Institute of Technology, and President and Fellows of Harvard College (“Broad”) have priority over The Regents of the University of California, University of Vienna, and Emmanuelle Charpentier (“CVC”) with respect to who was first to invent the use of single-guide CRISPR-Cas9 genome engineering technology in eukaryotic cells.

Patent Filings Roundup: All Nokia Phones Banned in Germany over Fortress Claims; IPR Proceeds over Arigna’s ITC Fintiv Arguments; Hashicorp Unloads on IP Edge Sub Invincible; PacSec Throws Up a Hail Mary

It was a typical week in terms of overall patent filing numbers, with 31 Patent Trial and Appeal Board (PTAB) filings, 56 district court complaints, and some 50-odd terminations; continued filings of inter partes reviews (IPRs) against Ericsson by Apple in their sprawling 5G fight; a Raymond Anthony Joao sub brought a 33-patent complaint (mostly expired) on shipping tracking; Fortress entities were on the receiving end of a few IPRs; and in Europe, a Fortress entity secured an injunction against Nokia over all Nokia-branded smartphones in the country, a huge blow for Nokia there. Unrelatedly, there was a hastily-filed errata filed in the Cal Tech opinion at the Federal Circuit with major estoppel implications (that Dennis Crouch has already well-covered).  Let’s get to it. 

Talkin’ Trade: When Administrative Agencies Collide—Litigating in Parallel at the ITC and the PTAB

Over the past decade, the Patent Trial and Appeal Board (PTAB) has emerged as a critical and much-relied-upon tool for those facing patent infringement allegations. Some say that’s exactly what Congress intended with the America Invents Act—a defendant can file a validity challenge at the PTAB and get an expedited ruling on invalidity in a forum with specialized technical expertise and before judges with relevant technical backgrounds, at a lower cost than litigating validity issues in district court. And in fact, district courts will often stay infringement actions pending PTAB review of a patent at issue in a particular case.But the district courts and the PTAB are not the only fora in which patent issues are adjudicated. The United States International Trade Commission (ITC)—an independent, quasi-judicial federal agency based in Washington, DC—has become a forum of choice for patent owners seeking fast and effective relief for patent infringement.

Original Claims to Award-Winning Wireless Mic Tech Found Obvious at CAFC, But Narrowed Claims Upheld

On Friday, the U.S. Court of Appeals for the Federal Circuit (CAFC) agreed with the Patent Trial and Appeal Board’s (PTAB’s) decision that the original claims of Zaxcom’s U.S. Patent No. 9,336,307 for Engineering Emmy® and technical OSCAR award-winning wireless microphone technology were unpatentable as obvious. However, the court upheld the substitute claims Zaxcom had proposed. Zaxcom appealed the PTAB’s decision on the original claims in May of 2020, arguing that the PTAB misconstrued the patent claims and failed to properly consider evidence of industry praise.

Patent Filings Roundup: Qualcomm Dragged into Waco by Magentar on IoT Chips; Board Skips Merits in Denial

Happy belated Valentine’s Day; there were 74 district court terminations last week (mostly file-and-settle flotsam); 36 Patent Trial and Appeal Board (PTAB) filings (bolsted by Qualcomm indemnification filings and some medical device action); and 56 district court patent filings this week, in a mid-month lull before certain entities have to hit their end-of-month quota; let’s get to it.

General Counsels Ask Raimondo to Immediately Repeal NHK-Fintiv Framework

Invoking familiar warnings about grave threats to U.S. innovation, 23 chief legal officers of big companies spanning industries from high-tech, internet and streaming to auto, financial services and home security, recently sent a letter to Secretary of Commerce Gina Raimondo calling on her to “immediately repeal the NHK-Fintiv rule” established by former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu via precedential Patent Trial and Appeal Board (PTAB) decisions. According to the letter, NHK-Fintiv practice has written vital protections intended by the America Invents Act out of the law without public notice or comment, and “has caused—and continues to cause—immediate and irreparable harm to American innovators and manufacturers.”

Federal Circuit Denies Mandamus in Due Process Violations Case Against Big Tech Companies

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.”

Patent Filings Roundup: End-of-Month Filing Spike; IP Val Sues Smart Thermostat Cos.

Last week included the end of January, which meant district court filings spiked as they usually do at the end of the month, with 92 new patent filings, and plenty of terminations (66). Patent Trial and Appeal Board (PTAB) challenges (41) were propped up by filings between Ericsson and Apple in their large-scale 5G dispute, Samsung challenging an entire portfolio, it seems, on some assets owned by a subsidiary of the perennial file-and-settle consort IP Edge (which seems to be getting big eyes and going after bigger players these days, after years of filing thousands of suits against smaller companies); a number of competitor-competitor chipmaker suits, including one by Infineon against more Vector Capital-backed Monterey Research semiconductor patents; challenges by Nokia against monetizer IP Bridge patents; and a number of petitions filed by Chanel against Molo Design Ltd.

When Commercial Success Can Prove Non-Obviousness

Imagine, as a patentee, that you assert your broadly claimed patent(s) against an alleged infringer, and your opponent takes you to the Patent Trial and Appeal Board (PTAB) via an inter partes review (IPR) petition, where they present sufficient evidence of obviousness such that you have to resort to (gulp) secondary considerations. While no dream situation for patentees, it is important to understand the patent owner’s evidentiary burden when confronting obviousness challenges using secondary considerations, such as commercial success, long-felt but unsolved needs, failure of others and unexpected results. Here are three recent Federal Circuit decisions that are informative with respect to successfully (or unsuccessfully) utilizing evidence of commercial success in countering an obviousness attack.

Wading into Contract Law Again, CAFC Says Forum Selection Clause Also Precludes IPRs

The U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today issued a precedential decision holding that the U.S. District Court for the District of Delaware improperly denied Nippon Shinyaku Co., Ltd.’s motion for a preliminary injunction in the court’s misreading of the plain language of a contract’s forum selection clause. The CAFC consequently reversed the decision and remanded for entry of a preliminary injunction (PI) enjoining Sarepta Therapeutics, Inc. from proceeding with its seven inter partes review petitions (IPRs) against Nippon Shinyaku and requiring that Sarepta withdraw the petitions.

CAFC Orders New Trial on Damages, Clarifies IPR Estoppel Rule in Appeal of Caltech’s $1.1 Billion Win Against Apple and Broadcom

On February 4, in a mixed precedential decision, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California in a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc. The suit was related to Caltech’s U.S. Patent 7,116,710 (‘710 patent), U.S. Patent 7,421,032 (‘032 patent), and U.S. Patent 7,916,781 (‘781 patent). The CAFC affirmed the district court’s denial of judgment as a matter of law (JMOL) on infringement because the jury’s verdict of infringement of the declared claims of the ‘710 and ‘032 patents was supported by substantial evidence and the district court’s construction of the claim limitation “repeat” was not erroneous.

CAFC Vacates PTAB Ruling for Apple, Citing Board Error on Applicant Admitted Prior Art

The U.S. Court of Appeals for the Federal Circuit (CAFC) today vacated and remanded two decisions of the Patent Trial and Appeal Board (PTAB) on related inter partes reviews (IPRs) brought by Apple against Qualcomm, explaining that the Board’s determination that “prior art consisting of patents or printed publications” includes applicant admitted prior art (AAPA) was incorrect. The CAFC nonetheless remanded the case for the PTAB to decide “whether Apple’s petition nonetheless raises its § 103 challenge on the basis of prior art consisting of patents or printed publications.” Apple petitioned the PTAB to review the claims of U.S. Patent No. 8,063,674. In two separate decisions, the PTAB found several claims unpatentable under Section 103, basing its finding on a ground raised by Apple that relied in part on AAPA and a prior art patent. Apple also challenged the claims as unpatentable under Section 103 based on two prior patents and one publication, but the Board said that Apple had not proven unpatentability on this ground.