Posts Tagged: "PTAB"

In mid-November, consumer tech giant Apple filed a petition for writ of certiorari asking the U.S. Supreme Court to review the Federal Circuit’s decision to dismiss Apple’s appeal of unsuccessful inter partes review (IPR) challenges to the validity of several patents owned by Qualcomm. In that ruling, the Federal Circuit found that Apple’s choice to enter a patent licensing agreement with Qualcomm covering the patents-at-issue extinguished Article III standing as to Apple’s appeals from the Patent Trial and Appeal Board (PTAB). The question presented by Apple’s petition is: “Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.”

In the last few weeks of 2021, patent owner New Vision Gaming & Development filed a motion for reconsideration  of a remand order issued by the U.S. Court of Appeals for the Federal Circuit. That ruling, entered in early December, remanded New Vision Gaming’s appeal of covered business method (CBM) review proceedings back to the Patent Trial and Appeal Board (PTAB) “for the limited purpose” of requesting Director review of the CBM review decisions under the U.S. Supreme Court’s Arthrex standard. New Vision Gaming’s recent motion for reconsideration raises several issues regarding the U.S. Patent and Trademark Office’s (USPTO’s) implementation of Director reviews under Arthrex, making this particular case an important one to follow through at least early 2022.

Reexaminations continue to gain favor, seeing a 47% increase over last year; the Patent Trial and Appeal Board (PTAB) sees fewer filings; and filings by non-practicing entities (NPEs) rose by 4%, according to Unified Patents’ 2021 Patent Dispute Report: Year in Review, published earlier this week. The PTAB saw a nearly 12% decline in filings from the previous year, whereas district court proceedings remained unchanged, said the report. It added: “Operating companies filed 5.5% less cases in district court and over 10% less filings at the PTAB.”

On December 28, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a pair of precedential decisions in appeals raised by chipmaker Intel. These appeals came from final written decisions in several inter partes review (IPR) proceedings challenging the validity of patent claims owned by rival firm Qualcomm. In both decisions, the Federal Circuit found that Intel satisfied Article III standing requirements for appealing from the Patent Trial and Appeal Board (PTAB). Standing has become a thorny issue that has plagued the Federal Circuit and PTAB.

According to Judge Taranto, when the issue of indefiniteness of claims is raised in an IPR the challenge is not merely a contest between the petitioner and the patent owner, but rather protects the interests of the judicial system, the agency, and the public. Therefore, the Board should have conducted a prior-art analysis without any consideration of or deference to the stipulation of the parties, and entry of a final written decision on the merits absent such an independent consideration was inappropriate. The Board should have determined if there is indefiniteness and if “such indefiniteness renders it impossible to adjudicate the prior-art challenge on its merits, then the Board should conclude that it is impossible to reach a decision on the merits of the challenge and so state in its decision.”

Noteworthy 2021 developments at the Patent Trial and Appeal Board (PTAB) were primarily driven by oversight—via the United States Patent and Trademark Office (USPTO) Director, Supreme Court and Federal Circuit—rather than by new rules or policy of the agency. After the highly anticipated Arthrex decision fizzled at the Supreme Court, the most significant 2021 development may be former Director Iancu’s departure and legacy of decidedly pro-patent owner policies. That legacy is increasingly under attack. From the Biden administration’s nomination of a new director, to legislative proposals, to Congressional pushback on Section 314(a) discretionary denials of institution (especially as they relate to the Western District of Texas), to lawsuits challenging the practice as an Administrative Procedures Act violation, change is afoot. The coming year is sure to see recalibration of current PTAB practices.

As we finish up the year, the high district court termination rate continues; 85 terminations this week, including a fair amount of transfers, rounded out a normal PTAB week (29 filed) and a slightly depressed litigation week (with 50 new complaints). 

In written answers to Senators’ questions for the record submitted today by Kathi Vidal, President Joe Biden’s nominee for the next U.S. Patent and Trademark Office (USPTO) Director, Vidal said that she “support[s] the principle of” former USPTO Director Andrei Iancu’s Patent Eligibility Guidance for examiners, but stopped short of wholly endorsing the present guidance or committing to keeping it in place. Instead, Vidal said she would review the guidance in light of intervening case law and comments on the USPTO’s study on the state of patent eligibility jurisprudence to determine if updates are needed.   

Since the Supreme Court decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), there has been much discussion about the Court’s ruling mandating an option for users to request that the Director of the U.S. Patent and Trademark Office (USPTO) review Final Written Decisions of the Patent Trial and Appeal Board (PTAB) rendered in trials under the America Invents Act (AIA) on the validity of issued patents. But there has been little or no discussion on such Director’s review of PTAB decisions on institution of AIA trials.

Another 82 district court terminations this week was again high, though careful analysis has revealed that many of those cases were terminated voluntarily and refiled elsewhere. The Patent Trial and Appeal Board (PTAB) saw just 22 inter partes reviews (IPRs) this week; a few parties walked away from their patents, including Litl LLC [TRI Ventures, Inc.], after a challenge by Microsoft. District court was up this week to 94 patent filings, and the year looks poised to end with filings up substantially over years past. The Board again exercised its Fintiv muscles in an IPR with a case pending in the International Trade Commission (ITC), this one an entity funded by Techquity Captial Management. Other semiconductor patents asserted by NPEs went down on Final Written Decision in IPR, including one of the patents asserted by Vector Capital’s Monterey Research; it’s worth noting that the semiconductor companies have collectively spent a lot of time before the Board this year after the increase in NPE suits there this year.

Last week, patent owner Cellspin Soft filed a citation of supplemental authorities  with the U.S. Court of Appeals for the Federal Circuit (CAFC) asking the appellate court to either vacate or reverse an order from the U.S. Patent and Trademark Office (USPTO) denying Director review following a pair of inter partes review (IPR) proceedings conducted at the Patent Trial and Appeal Board (PTAB). Cellspin Soft is challenging the USPTO’s denial as invalid both under the Administrative Procedures Act (APA), as well as under the U.S. Supreme Court’s precedent in United States v. Arthrex (2021). Cellspin had filed requests seeking Director review of a pair of final written decisions invalidating all challenged claims of U.S. Patent No. 9258698, Automatic Media Upload for Publishing Data and Multimedia Content. It claims a machine-implemented method of media transfer utilizing a digital data capture device and a Bluetooth-enabled mobile device for publishing multimedia content automatically onto a website with minimal user intervention. Issued to Cellspin Soft in February 2016, the ‘698 patent has been asserted in infringement suits filed in U.S. district courts against several defendants including Panasonic, GoPro, Garmin, Nikon, Canon and Eastman Kodak.

The U.S. Court of Appeals for the Federal Circuit in a precedential decision yesterday affirmed a Patent Trial and Appeal Board (PTAB) decision that Teva Pharmaceuticals had failed to prove Corcept Therapuetics’ U.S. Patent No. 10,195,214 would have been obvious. The patent covers methods of treating Cushing’s syndrome, a disease caused by excessive levels of the naturally occurring steroid hormone, cortisol. Chief Judge Moore authored the opinion.

The Patent Trial and Appeal Board (PTAB), created by the America Invents Act (AIA) just over 10 years ago, is the most electrifying lightning rod in the industry. As explained repeatedly by Members of Congress at the time the AIA was enacted, the purpose was to create a streamlined, less expensive, alternative administrative means to challenge the invalidity of issued patents. Sadly, with that being the stated purpose, the creation of the PTAB can be objectively characterized as nothing other than an abysmal failure. What has evolved is anything but streamlined, and certainly not inexpensive, even compared with district court litigation.

The U.S. Court of Appeals for the Federal Circuit ruled yesterday in two precedential decisions that Moderna’s challenges to decisions of the Patent Trial and Appeal Board (PTAB) in favor of Arbutus both failed. The CAFC dismissed one ruling for lack of standing and in the other said Moderna’s arguments that the PTAB erred in its finding that Arbutus’ patent was not unpatentable as obvious were unpersuasive.