Posts Tagged: "PGR"

Doubling Down on Double Adjudication – the MerchSource post-issuance review model

Imagine this: you become aware of a patent that might cover your products, so you reach out to the patentee to secure a license agreement. After negotiating and entering the agreement, you later decide you’d like to pay less or no royalties. So you threaten to file some IPR and PGR petitions, and when that fails to secure more favorable terms, you breach the contract. If you find yourself sued for patent infringement you protest to the court that as the agent of public interest, you must be allowed to simultaneously challenge the validity of the patents not only before that court, but also before the PTAB. On the same grounds. At the same time. This is what at least one licensee is trying, and the Federal Circuit may soon provide guidance on the viability of this double-adjudication-for-the-public-good-tactic.

The House IP Subcommittee: A Bunch of Fiddling Neros Watching the U.S. Patent System Burn

Interestingly, in the history of the entire CBM program, only three petitions have ended with final written decisions upholding all claims as valid. That’s 1 percent of all CBM petitions ultimately resulting in a final decision in favor of the patent owner… If Congress enacts legislation to mix the CBM program with IPRs and PGRs, which Rep. Issa seemed to contemplate during the hearing, then you just get the worst of both worlds: an environment in which any person could challenge any patent on the widest number of statutory grounds, and it all happens outside of the federal judiciary without a jury trial.

STRONGER Patents Act Introduced in House, Seeks to Strengthen a Crippled Patent System

In a telephone interview, Rep. Stivers noted that, while the AIA was intended as legislation that would make the patent system more efficient, the resulting differences in standards between the PTAB and the district courts have led to a large number of appeals from the PTAB. “Instead of living up to its billing as being more efficient and quicker, the PTAB has become just another stop which is more complicated, more expensive and exactly the opposite of what it was intended to do,” Stivers said. Although he noted that he was not an advocate of getting rid of the IPR process entirely, Stivers felt that the PTAB had to use the same standards of evidence used by district courts. “If that happens, then the PTAB can live up to the potential that it was sold on and you can get the same ruling no matter where you go,” Stivers said.

PTAB Chief Judge defends APJs as having extensive legal experience

The USPTO has provided us with a comment from Chief Judge David Ruschke, who defends APJs of the PTAB as having extensive legal and technical experience. The problem is this view is simply not consistent with the data. While APJs may be technically competent, there is little doubt many on the PTAB were appointed when they simply did not have extensive legal experience… PTAB judges preside over administrative trials, which have all the trappings of litigation (i.e., motions to dismiss, discovery, discovery disputes, hearings, testimony, depositions, constitutional rulings, jurisdictional matters, questions of contract interpretation and privity, and much, much more. No matter how much Ruschke and others do not want to acknowledge the truth, it is perfectly accurate to say that patent agents and patent examiners have absolutely no experience in that world. They simply can’t, unless they are engaging in the unauthorized practice of law.

Telebrands loses $12.3 million verdict for willful patent infringement of Bunch O Balloons

On November 21st, a jury verdict entered in the Eastern District of Texas awarded $12.3 million in damages to Tinnus Enterprises and ZURU Ltd. in a patent infringement case against major U.S. telemarketing firms Telebrands and its subsidiary Bulbhead.com. The verdict, which also carries a finding of willful infringement of the patents-in-suit, further upheld the validity of patents owned by Tinnus in stark contrast to findings which have issued by the Patent Trial and Appeal Board (PTAB) on those patents.