Posts Tagged: "PTAB"

One day after the Senate Judiciary Committee’s IP Subcommittee met to discuss the PTAB Reform Act and other ways to improve the Patent Trial and Appeal Board (PTAB), the U.S. House of Representative’s Subcommittee on Courts, Intellectual Property, and the Internet held a similar hearing featuring six witnesses with varying views on the PTAB about how to improve the system. Representative Thomas Massie (R-KY), who last year introduced a bill that would repeal the PTAB entirely, grilled the witnesses about the effects of the PTAB on U.S. investment in innovation and national security, and expressed skepticism that the system has succeeded in its intended goal of providing a cheaper, faster forum, particularly for small businesses and independent inventors.

As we reported yesterday, the U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued a memorandum on the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” clarifying current Patent Trial and Appeal Board (PTAB) practice on discretionary denials of inter partes review (IPR) and post grant review (PGR) proceeding institutions. The memo and corresponding press release explain that the PTAB “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

Today, the Senate Committee on the Judiciary’s Subcommittee on Intellectual Property met to hear testimony from four witnesses about proposed changes to the Patent Trial and Appeal Board (PTAB) as outlined in the recently announced PTAB Reform Act. Subcommittee Chairman Senator Patrick Leahy (D-VT), Ranking Member Thom Tillis (R-NC) and Senator John Cornyn (R-TX) introduced the bill last week. Those testifying generally agreed the bill represents compromise and, at Tillis’ prompting, on a scale of green to red, scored it a green to yellow overall.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has issued a memorandum on the “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” clarifying current Patent Trial and Appeal Board (PTAB) practice on discretionary denials of inter partes review (IPR) and post grant review (PGR) proceeding institutions. The memo and corresponding press release explain that the PTAB “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

The United States Patent and Trademark Office (USPTO) on Tuesday announced that it has updated its interim guidance on the Director Review process under Arthrex v. Smith & Nephew to indicate that parties should identify any issues of first impression in their requests for Director Review. In a conversation with IPWatchdog Founder and CEO Gene Quinn yesterday, USPTO Director Kathi Vidal said that “it helps when parties focus the review on particular issues,” and indicated that issues of first impression fall under one of the three main categories of cases warranting Director Review.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal and outgoing Acting Deputy Director Drew Hirshfeld joined IPWatchdog’s CEO and Founder Gene Quinn today to discuss Hirshfeld’s nearly 30-year career with the Office, as well as Vidal’s philosophy as she embarks on her journey as the new Director. Vidal emphasized the importance of dialogue in shaping USPTO practices and processes but said she also will not wait around indefinitely on input over doing “what’s right for the country.” She said: “We will get feedback [but] that’s not going to stop us from acting.” Hirshfeld, who spoke with Quinn on his last day in office, joined the USPTO in 1994.

This week in Washington IP news and events, both the Senate and the House of Representatives hold hearings looking at various aspects of the Patent Trial and Appeal Board (PTAB), including its impact on small businesses as well as ways that predictability and fairness in PTAB proceedings can be restored by Congress. Elsewhere, the American Enterprise Institute explores the current state of the debate over a waiver of international IP rights for COVID-19 vaccines, and IPWatchdog’s President and CEO Gene Quinn hosts a conversation with outgoing USPTO Commissioner of Patents Drew Hirshfeld and recently confirmed USPTO Director Kathi Vidal.

On June 7, the U.S. Patent and Trademark Office’s (USPTO’s) Director’s Blog published a post authored by USPTO Director Kathi Vidal announcing that the agency is now receiving applications from inventors seeking free legal assistance to bring ex parte appeals of patent examiner rejections to the Patent Trial and Appeal Board (PTAB). While Vidal’s announcement is certainly welcome news to many inventors who are in financial need, it fails to address larger issues faced by inventors at the PTAB that have been voiced by members of Congress and the inventor community alike in recent months.

United States Patent and Trademark Office (USPTO) Director Kathi Vidal has intervened in two Patent Trial and Appeal Board (PTAB) cases that have caused much controversy in the patent world. Vidal yesterday granted Director Review in both OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, both of which have been the subject of scrutiny by members of Congress and patent practitioners, since the petitioners involved were incorporated after Intel was found to have infringed VLSI’s patents in district court and have no discernable business operations beyond challenging VLSI’s patent claims. The two entities’ petitions were also nearly identical to inter partes review (IPR) petitions previously filed by Intel that had been rejected by the USPTO.

On Wednesday, May 25, United States Patent and Trademark Office (USPTO) Director Kathi Vidal and a panel of academics from Silicon Valley participated in a 90-minute, live Q&A webinar regarding the state of the USPTO. I attended virtually. I am a five-time world jump rope champion and the only jump roper to design and patent a jump rope handle technology. I was granted my two patents (US 7,789,809 B2 and US 8,136.208 B2) in 2010/2012. I started my jump rope manufacturing business, JumpNrope, in 2010 here in Louisville, Colorado. I am proud to also say that I source all my jump rope parts and pieces from U.S. vendors. We make all our jump ropes by hand in Colorado. My technology not only changed the sport of jump rope by offering a precision speed jump rope handle, but it also changed the fitness industry. To date, hundreds of companies have infringed on my patent, including Rogue Fitness, the largest fitness distributor for CrossFit and Strongman. As detailed in my case, I believe that Rogue has willfully infringed on my patent since 2012 by selling tens of millions of dollars’ worth of infringing jump ropes per year.

On June 1, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in ClearOne, Inc. v. Shure Acquisition Holdings, Inc. affirming a final written decision by the Patent Trial and Appeal Board (PTAB), which found that a substituted claim  offered by the patent owner, Shure, was not invalid due to an indefinite claim term. The Federal Circuit also affirmed the PTAB’s decision denying ClearOne’s request to file a motion for sanctions against Shure for the patent owner’s alleged violation of the duty to disclose material prior art.

Following a late April request by Senators Thom Tillis (R-NC) and Mazie Hirono (D-HI)  to then newly-confirmed United States Patent and Trademark Office (USPTO) Director Kathi Vidal asking her to respond to a number of questions surrounding abuse of the inter partes review (IPR) system, Vidal last week sent a letter explaining she is working on the problem. The senators’ April letter had expressed concern over Patent Trial and Appeal Board (PTAB) decisions to institute inter partes review (IPR) proceedings in OpenSky Industries, LLC v. VLSI Technology LLC and Patent Quality Assurance, LLC v. VLSI Technology LLC. “The facts and circumstances around these proceedings suggest petitioners OpenSky Industries, LLC (OpenSky) and Patent Quality Assurance, LLC (PQA) brought the proceedings to manipulate the U.S. Patent and Trademark Office (USPTO) for their own financial gain,” explained the letter.

In a blog post on May 24, just over a month after being sworn in, Director Kathi Vidal stated that one of her priorities is to “accelerate change and communications by adopting interim processes and procedures while [the USPTO] work[s] to finalize.”  A mere two days later, the U.S. Patent and Trademark Office (USPTO) issued one such interim process for Patent Trial and Appeal Board (PTAB) decision circulation and internal PTAB review. In addition to speed, this interim process is consistent with Director Vidal’s emphasis on transparency by ensuring that the parties to a proceeding and the public know the identity of the decision-makers. Nevertheless, as discussed further in this article, Director Vidal and PTAB Executive Management must be proactive in identifying areas for further publicly-issued guidance. Otherwise, consistency in PTAB decision-making is likely to suffer.

On May 27, the U.S. Court of Appeals for the Federal Circuit issued a decision in Arthrex, Inc. v. Smith & Nephew, Inc. (Arthrex II) affirming both a final written decision issued by the Patent Trial and Appeal Board (PTAB) invalidating patent claims owned by Arthrex, as well as several arguments raised by Arthrex challenging the denial of Director review decided by the U.S. Patent and Trademark Office’s Commissioner for Patents. The opinion, authored by Chief Judge Kimberley Moore, reasoned that the USPTO did not violate the U.S. Supreme Court’s mandate in Arthrex I despite the fact that no presidentially-appointed, senate-confirmed Director was in place at the USPTO when the agency denied Arthrex’s request for Director review.