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Posts Tagged: "Proppant Express Investments"

Facebook v. Windy City Settles It: The CAFC Does Not Care About the PTAB’s Opinions

The Supreme Court in SAS (SAS Institute Inc. v. Iancu) was quite clear that the Patent Trial and Appeal Board (PTAB or Board) has to follow the statute when conducting Inter Partes Review (IPR). So, when Facebook sought to enter patent claims into their IPR against Windy City Innovations past the one-year deadline dictated by 35 USC § 315(b), the PTAB had conveniently written themselves an opinion that allowed Facebook to join Facebook to circumvent the deadline. The Board’s Precedential Opinion Panel (POP) used the language in USC § 315(c) and had written that the statutory use of the words “any person” allowed them to join a party to itself. See Proppant Express Invs., LLC v. Oren Techs., LLC, No. IPR2018-00914, Paper 21, at 4–6 (P.T.A.B. Nov. 8, 2018). After the CAFC’s Facebook v. Windy City decision, it’s clear that any PTAB Precedential Opinion Panel statutory interpretation is irrelevant. Practitioners should not accept any conclusions made by the Board about a statute, and petitioners should be more assured that a reasoned argument will prevail.

Facebook v. Windy City: CAFC Strikes Down PTAB’s Approach to Joinder in IPRs

In Facebook v. Windy City Innovations, the U.S. Court of Appeals for the Federal Circuit earlier today ruled that the Patent Trial and Appeal Board (PTAB) erred both in allowing Facebook to join itself to a proceeding in which it was already a party, and in allowing Facebook to add new claims to the inter partes reviews (IPRs) at issue through that joinder…. On the topic of whether the language of § 315(c) authorizes the joinder of a person as a party to a proceeding in which it is already a party, the Court was again clear on what the plain language of § 315(c) allows. The Director is permitted  “to join as a party [to an already instituted IPR] any person’ who meets certain requirements. 35 U.S.C. § 315 (emphases added).”

Re-examining the USPTO’s Bid for Adjudicatory Chevron Deference—a Response to One Analysis of Facebook v. Windy City

Last week, Professor Andrew Michaels published an article with IPWatchdog commenting on Facebook v. Windy City and the U.S. Patent and Trademark Office’s claim for Chevron deference for precedential decisions of the Patent Trial and Appeal Board (PTAB). While I agree with his ultimate conclusion, “the PTAB cannot speak with the force of law through adjudication even on issues where it has the authority to do so through regulation,” I disagree with the path he took to get there. I’ve written extensively on the topic (see the bibliography is at the bottom of this article). Of my articles, the most relevant is The PTAB Is Not an Article III Court, Part 3: Precedential and Informative Opinions. More recently, I filed an amicus brief in Facebook. In my view, PTAB precedential decisions can be eligible for Chevron deference in only the rarest of circumstances:  the PTAB is the wrong entity in the USPTO to engage in rulemaking, the PTAB doesn’t follow the procedures required by statute and executive order for rulemaking, and the PTAB doesn’t have access to the personnel within the USPTO that are necessary for rulemaking.

USPTO Precedential Opinion Panel Delivers Lukewarm Attempt to Streamline PTAB Policy

In September 2018, the United States Patent and Trademark Office (USPTO) announced the substantial revision of Standard Operating Procedures (SOPs) for the paneling of matters before the Patent Trial and Appeal Board (PTAB) (SOP1) and precedential and informative decisions (SOP2), based upon feedback the Office received from stakeholders, courts, legislators, and six years of experience with America Invents Act (AIA) trial proceedings. Now, the USPTO’s Precedential Opinion Panel (POP)—which includes USPTO Director Andrei Iancu, Commissioner for Patents Drew Hirshfeld, and Acting Chief Administrative Patent Judge Scott Boalick—has issued its first ever decision, holding that a petitioner may be joined to a proceeding in which it is already a party; that the Board has discretion to allow joinder of new issues in an existing proceeding; and that the existence of a time bar under 35 U.S.C. § 315(b) is one of several factors to consider when exercising this discretion. Despite that guidance, the POP emphasized that such discretion should be used only in limited circumstances, “namely, where fairness requires it and to avoid undue prejudice to a party.” Because the instant request for joinder was filed as a result of Petitioner’s errors, the Board dismissed the IPR petition, noting that “there are no fairness or undue prejudice concerns implicated, and the Petition is otherwise time-barred under § 315(b).”