Posts Tagged: "PTAB Trials"

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.

Doubtless there are some manufacturing firms, such as Telebrands, who are great endorsers of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) and how that agency has found in favor of copy-cats even as federal courts have repeatedly issued injunctions and found in favor of the inventor of an award winning toy (see here and here).But the manufacturing sector did not all line up in favor of Greene’s Energy Group, although most did. Nevertheless, given that manufacturing firms tend to license patents and do not necessarily develop their own technologies, it is informative to see how this sector feels that the Supreme Court should decide Oil States.

On November 1st, a panel of administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) issued a final written decision which found that 11 claims of a networking patent held by Salt Lake City, UT-based wide area network (WAN) developer FatPipe Networks as being anticipated and obvious in light of prior art. A press release on the news from FatPipe, however, notes that the PTAB panel did not invalidate “a signature claim” of the patent covering a method for load balancing over disparate networks.

On the afternoon of Wednesday, November 29th, the U.S. Senate Committee on the Judiciary held a hearing to consider the nomination of four political appointees from the Trump Administration. Included among the days’ nominees was Andrei Iancu, President Trump’s selection to serve as Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office. Though the nomination hearing was brief and Iancu’s remarks were very measured, there would be reason for patent owners to think that a more balanced playing field at the USPTO could start to form should Iancu be confirmed as Director of the agency.

Ruschke noted that his authority to expand the panels for PTAB trials doesn’t require him to notify the parties in the trial that the decision to expand the panel has been made. In response to questions on panel expansion, Ruschke noted that when the decision to expand the panel has been made, “the parties will find out in the decision when it issues at that point.” So decisions to expand panels are made in secret and parties in the trial only find out about panel expansion after a decision is reached… Interestingly, petitioner General Plastic requested a rehearing with an expanded panel but the expanded panel in that case found that PTAB’s governing statutes do not permit parties to request, or panels to authorize, expanded panels; panel expansion only lies within the Chief Judge’s discretion.

October 30th was a very busy day for amici filing briefs with the U.S. Supreme Court on how the highest court in the nation should decide in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, a case in which oral arguments will be heard on November 27th. Many of the briefs filed on the 30th were submitted by some of the biggest names in the tech industry. Taking a look at briefs filed by this major companies, some of whom have been seeing great success in patent validity trials at the Patent Trial and Appeal Board (PTAB), it’s both revealing and unsurprising to find how the tech ruling class feels that the Supreme Court should decide in Oil States.

A review of amici briefs filed with the U.S. Supreme Court in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC provides evidence of a stark split in how various stakeholders in the U.S. patent system view the patent validity challenge activities ongoing at the Patent Trial and Appeal Board (PTAB). Whereas many of the world’s largest tech companies who have a dominant advantage in the consumer marketplace are in favor of the PTAB remaining active, many small entities and individual inventors are greatly opposed to the PTAB and its differing standards on patent validity leading to a higher rate of invalidation than in Article III district court proceedings. A look at amici briefs coming from law professors can shed some light on where the academic sector comes down on the subject of the PTAB’s constitutionality.

The government’s brief argues that IPR proceedings at the PTAB are consistent with Article III because, in its view, patents are public rights and not private ones and the right for an inventor to seek a patent is a public right. In the government’s eyes, it is constitutionally permissible for the U.S. Patent and Trademark Office to reassess previously issued patents for revoking in order to “correct its own errors.” If the PTAB errs, then patent owners have legal recourse in appealing those cases to the Court of Appeals for the Federal Circuit, the government argues.

A review of amicus briefs filed with the U.S. Supreme Court in advance of oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC revealed that, by and large, the American tech ruling class wishes to see SCOTUS leave the Patent Trial and Appeal Board (PTAB) intact in the face of the constitutional challenges facing the PTAB in the case. Today, we’ll review a series of briefs filed by amici representing many of the smaller players in the U.S. patent system who have by and large been railroaded at the PTAB, an agency which invalidates patents at an incredibly high rate, fails to follow Congressional statutes regulating its own activities and stacks administrative patent judge (APJ) panels to achieve policy objectives desired by the Director of the U.S. Patent and Trademark Office.

Is a patent a property right? It certainly has been considered so for over 200 years. If it is a property right, to invalidate it should require an Article III (judicial) court with all the normal due process required to invalidate property right… The US Supreme Court will look at these issues when it deliberates Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, starting Monday morning, November 27th. US Inventor, the premier non-profit fighting for inventors’ rights, will be staging a demonstration to bring attention to the issue. You have the unique opportunity to come and be a part of history as we make our voices heard.

In two final decisions and five decisions on IPR institution, the PTAB panel of administrative patent judges (APJs) found that petitioners Apple and AT&T did not meet the required burden of proof to invalidate two VoIP-Pal patents. In the final written decisions, Apple and AT&T failed to prove invalidity of the challenged claims by a preponderance of the evidence. Similarly, the PTAB found that neither party had shown a reasonable likelihood of invalidity at the institution stage in the other cases. Along with last November’s denial of an IPR petition filed by Unified Patents, the VoIP-Pal patents have been unscathed through a total of eight IPR petitions.

The USPTO issued a final rule to set or adjust certain patent fees as the agency is authorized to do under the America Invents Act (AIA) of 2011. The fee increases, which include some significant increases to petitioners filing for inter partes review (IPR) proceedings, are ostensibly meant to cover costs for USPTO operations, Patent Trial and Appeal Board (PTAB) operations and administrative services as the USPTO attempts to achieve strategic goals including backlog reductions and “patent quality enhancements.”… The OMB’s determination of the new fees as a “transfer payment” means that the rule isn’t subject to the requirements of Executive Order 13771, titled Reducing Regulation and Controlling Regulatory Costs and signed on January 30th of this year.

Luckily for Apple and Microsoft, however, VirnetX did not assert the ‘135 patent against Mangrove Partners, a hedge fund, which filed a petition for IPR against the ‘135 patent on April 14th, 2015; Mangrove reportedly shorted VirnetX stock around this time. On October 7th, 2015, the PTAB panel adjudicating the case decided to institute the IPR as the petitioner Mangrove had demonstrated a reasonable likelihood of proving invalidity of the challenged claims. Then in January 2016, Apple was successful in having its petition for IPR review of the challenged ‘135 claims joined to Mangrove’s IPR. VirnetX had objected to Apple’s motion for joinder based on the Section 315(b) language but the PTAB found that Section 315(b) did not apply to joinder motions which are governed by 35 U.S.C. § 315(c).

It is no secret that the fortunes of Mountain View, CA-based tech conglomerate Alphabet Inc. are largely based upon the advertising revenues accrued through its subsidiary Google and its incredibly popular search engine. The company’s most recent earnings report for the third quarter of 2017 shows that, of the company’s $22.5 billion in revenues for the quarter, $19.8 billion came from Google advertising revenues. That’s nearly 90 percent of Google’s entire revenues for the third quarter; the rest comes from Google’s other revenues ($2.4 billion) and Alphabet’s Other Bets ($197 million). The name of the corporation may be Alphabet but that entity is nothing without Google and its advertising revenues.

As we mark the fifth anniversary of the effective date of Patent Trial and Appeal Board trials on September 16, we find that the early years of the practice have been a learning experience both for the PTAB and for PTAB practitioners.  Reflecting on the past five years, three key lessons emerge for practitioners, from practice and directly from the APJs presiding over these cases when they have spoken on topic: Follow the rules, including those that are explicit and those that are unspoken, know your audience, and focus on the facts.