Posts Tagged: "PTAB Trials"

Supreme Court Asked to Decide if AIA Creates Standing for Any Party to Appeal PTAB Decisions

Japanese manufacturer JTEKT Corporation recently filed a petition for writ of certiorari with the U.S. Supreme Court asking he nation’s highest court to determine whether federal statutes governing appeals from the Patent Trial and Appeal Board (PTAB) create a right for PTAB petitioners to have an appellate court review adverse final written decisions. If the case is taken by the Supreme Court the question will be whether the AIA creates standing for any dissatisfied party to appeal a PTAB final decision. The Court of Appeals for the Federal Circuit’s had decided JTEKT did not prove an injury in fact for the purposes of determining the existence of Article III standing in its appeal.

CAFC Vacates PTAB Decision to Uphold Conversant Wireless Patent Challenged by Google, LG

On Tuesday, November 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Google LLC v. Conversant Wireless Licensing, which vacated a decision by the Patent Trial and Appeal Board (PTAB) to uphold the validity of patent claims owned by Conversant after conducting an inter partes review (IPR) proceeding petitioned by Google and LG Electronics… It is hard to reconcile decisions where the Federal Circuit bends over backwards to give more process and procedural rights to petitioners when for so long patent owners have been railroaded at the PTAB and then had those summary execution proceedings rubber stamped by the Federal Circuit. If increased scrutiny on the PTAB is a two-way street I welcome it.

Nasdaq ISE Files Motion to Disqualify Fish & Richardson at PTAB Over Prior Representation

Nasdaq ISE’s motion to disqualify Fish & Richardson was made pursuant to 37 CFR 11.109, which prevents a practitioner from representing a party adverse to a former client in substantially similar proceedings; this duty is imputed to the practitioner’s law firm under 37 CFR 11.110. In its motion, Nasdaq argued that the PTAB should adopt the magistrate judge’s finding that the defense of MIAX, including the CBM reviews challenging the validity of the patents asserted against MIAX, is a collaborative effort and Fish & Richardson should be disqualified because of the conflict of interest. The particular patent-at-issue in this CBM review was filed and prosecuted during the period in which Fish represented Nasdaq. “Because patent-eligibility, this sole issue in this CBMR, is evaluated from the time of invention… the confidential factual information Fish obtained from Nasdaq is material to the issues in this [CBM review],” the motion reads.

Supreme Court Refuses to Take SSL Services v. Cisco, Will Not Answer Question on Multiple Proceedings Rule at PTAB

In its petition for writ, SSL Services argued that the PTAB’s decision to institute the IPR incorrectly denied the application of 35 U.S.C. § 325(d), the statute governing multiple proceedings at the USPTO; giving the USPTO Director authority to reject a proceeding based on substantially similar prior art or arguments already presented to the agency in a validity review. While the PTAB laid out a multi-factor test for applying the multiple proceedings rule in a 2017 precedential decision in General Plastic v. Canon, SSL Services argued that this test is legally incorrect because the factors in that test do not find support in the statute. Further, the PTAB has applied Section 325(d) to bar the institution of IPRs in far less meritorious cases, including multiple cases where the asserted prior art had only been cited in the original prosecution of the patent and not a validity challenge after the patent had issued. This has resulted in a standard for applying Section 325(d) which is unworkable, SSL Services argued.

CAFC Affirms PTAB Win for Patent Owner in Nonprecedential Decision, Chief Prost Dissents

The Federal Circuit recently issued a nonprecedential opinion in Amazon.com, Inc. v. ZitoVault, LLC, affirming a decision by the Patent Trial and Appeal Board (PTAB) that e-commerce giant Amazon failed to prove a patent owned by security solutions provider ZitoVault was unpatentable. The Federal Circuit majority of Circuit Judges Kara Stoll and Kathleen O’Malley disagreed with Amazon’s that the PTAB erred in its claim construction. Dissenting, Chief Judge Sharon Prost wrote that she believed the PTAB’s analysis of a specific claim term was flawed, and she would have vacated the PTAB decision and remanded the case for further consideration. The patent-at-issue was ZitoVault’s U.S. Patent No. 6484257, titled System and Method for Maintaining N Number of Simultaneous Cryptographic Sessions Using a Distributed Computing Environment. Issued in November 2002, it claims a software architecture for conducting a plurality of cryptographic sessions over a distributed computing environment.