Posts Tagged: "post grant procedures"

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision today that the Patent Trial and Appeal Board (PTAB) does not lose its statutory authority to issue a Final Written Decision when it misses the 1.5-year deadline to do so, as established by the patent statute. According to the opinion, which was authored by Judge Dyk, “[t]his appears to be the only proceeding in which the Board has failed to meet the statutory deadline, and this is accordingly a matter of first impression.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today affirming the Patent Trial and Appeal Board’s (PTAB’s) finding that Medtronic failed to prove the challenged claims of Teleflex’s catheter patent unpatentable. In several previous precedential decisions issued this year, the CAFC similarly upheld the PTAB’s determinations. In May, the court said that Medtronic failed to show the challenged claims of five catheter patents unpatentable because the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented. And in June, the court found in two separate rulings issued the same day that Teleflex’s objective evidence supported a presumption of nexus, that Medtronic copied Teleflex’s product and that Teleflex’s substitute claims did not lack adequate written description.

The U.S. Patent and Trademark Office (USPTO) responded last week to a petition for certiorari that is asking the Supreme Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that said appellate review of whether the Patent Trial and Appeal Board’s (PTAB’s) discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” is precluded by Section 314(d) of the patent statute.

It was a typical week for patent filings at both the Patent Trial and Appeal Board (PTAB) and in district courts, with 25 new PTAB petitions (five post grant review and 20 inter partes review) and 53 new district court complaints filed. At the PTAB, there were three procedural denials under Section 325(d) (and denying patent owner’s request to deny under Fintiv) in IPRs filed by Nokia Corp. against optical networking patents owned by Alexander Soto and Walter Soto and asserted by inventor owned-NextGen Innovations, LLC.

The Senate Subcommittee on Intellectual Property held a hearing today featuring witnesses who weighed in on the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, which was introduced in June by Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL) and Mazie Hirono (D-HI). Today’s was the sixth hearing of the IP Subcommittee this year. The goal of the PREVAIL Act is to reform the Patent Trial and Appeal Board (PTAB) in a number of ways.

It was another slow week for patent filings at the Patent Trial and Appeal Board (PTAB) and a typical week in district courts, with 52 district court complaints filed and 22 new PTAB petitions. There was a new discretionary denial, a bunch of litigation-provoked high-profile PTAB challenges, and some notable new litigations. There was another Fintiv discretionary denial this week: here, a Chinese patent owner, Ningde Amperex Technology Ltd., benefited from the Board’s discretionary denial rules in a petition brought by another Chinese battery company. The case, IPR2023-00585, leaves unaddressed the questions raised about the validity of U.S. Patent 11329352.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential ruling finding that it is ultimately the petitioner’s burden to clearly present arguments in an inter partes review (IPR), and that Netflix failed to do so in challenging the relevant claims of DivX’s streaming technology patents. Judge Dyk dissented from the majority.  

It was a slow week at the Patent Trial and Appeal Board (PTAB) with just 18 new petitions—all inter partes reviews (IPRs); in district court, a slightly below average 54 new patent filings and 48 terminations rounded out the count. District courts saw continued filings in several large campaigns. Unwired Global Systems LLC (associated with high volume plaintiff, Jeffrey Gross) adds another seven defendants to its campaign, asserting a single patent related to home area network middleware interfaces and inventor-controlled Optimum Imaging Technologies LLC filed suit against six defendants asserting patents related to, not surprisingly, digital imaging, bringing the total number of defendants to seven.

Inter partes review (IPR) is a legal process conducted before the Patent Trial and Appeal Board (PTAB) to assess patentability based on anticipation or obviousness using prior art publications and patents. Congress established IPR to offer an efficient alternative to litigating patent disputes before the district courts. This article discusses some practice tips for both challenging and defending patents in IPRs before the PTAB.

On October 16, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Corephotonics, Ltd. v. Apple Inc. affirming most of a final written decision by the Patent Trial and Appeal Board (PTAB) that invalidated dual-aperture camera system patents owned by Corephotonics. The Federal Circuit nixed the patent owner’s arguments that asserted prior art references were not analogous art but remanded to the PTAB for further explanation of its ruling, as the Board may have misconstrued the pertinent problem addressed by one reference.

In Sur-Replies filed late last week in inter partes review (IPR) proceedings, Urban Intel, Inc. told the Patent Trial and Appeal Board (PTAB) that threats made by ASSA ABLOY Global Solutions “to file IPR petitions and a declaratory judgment action unless granted a free license to three valuable patents,” among other allegations, “runs directly counter to the purpose and goals of the post-grant administrative challenge system.” The sur-replies are in response to petitioner’s replies filed earlier this month by hotel security company ASSA, addressing abuse of PTAB process allegations by Urban Intel. ASSA argued that the U.S. Patent and Trademark Office (USPTO) cannot enter sanctions against it because ASSA did not seek payment from Urban Intel’s exclusive licensee when it threatened to “rain down an avalanche of IPRs” if ASSA didn’t obtain a cost-free license to Urban Intel’s patents, according to the patent owner’s preliminary response.

It was a relatively average week for patent filings in the district court with 59 new complaints. New filings included multiple filings associated with high-volume plaintiffs such as Jeffrey Gross, Leigh Rothschild, as well as a slew of filings from Pueblo Nuevo in a banking campaign. Meanwhile, XR Communications settled three inter partes reviews (IPRs) and filed two new cases against wireless carriers.

The U.S. Patent and Trademark Office (USPTO) today announced new guidance on empaneling procedures for the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB). Under the guidance, PTAB and TTAB management will “avoid empaneling cases to judges who hold stock or bonds (publicly traded or privately held) in any of the disclosed parties or real parties in interest, regardless of the dollar value.”

The general consensus of attendees at a panel held during IPWatchdog LIVE 2023, day two, is that the Patent Trial and Appeal Board (PTAB) will never be eliminated. Open questions remain, however, on the effectiveness of PTAB reforms recently proposed by the U.S. Patent and Trademark Office (USPTO). Those rule changes, and similar legislative efforts in Congress, were the subject of “Dissecting PTAB Rulemaking & Legislation: Will it Make Things Any Better?”

The regulatory framework for the inter partes review (IPR) process has long been the subject of criticism from both patent owners and petitioners. There is a growing consensus that the existing rules need to be revised to address loopholes and unintended consequences that have developed over the 10 years the America Invents Act (AIA) has been in effect. To that end, both the U.S. Patent and Trademark Office (USPTO) and Congress have proposed changes in the regulatory framework. While the two disparate approaches seek to change the IPR playing field, their purpose and approach are significantly different. This article discusses those similarities and differences.