Posts Tagged: "PTAB"

Google General Counsel’s Clarion Call for U.S. Patent System Reform Should Not Be Heeded

On April 28, Google’s General Counsel Halimah DeLaine Prado authored a post published on Google’s official blog to voice concerns felt by one of the world’s richest corporations that the U.S. patent system is currently in a state of growing crisis. The post offers several suggestions, each sanctioned by Google, as to steps that can be taken in all three branches of the U.S. federal government to address patent quality, abusive litigation and forum shopping. Unfortunately, the proposed reforms would help very little, if at all, toward improving certainty and clarity in patent rights in a way that would actually improve American innovation by supporting small startups and individual inventors in our country. Indeed, any informed observer of the U.S. patent system would recognize that Google’s proposed reforms would instead do a great deal to advance Google’s own business interests ahead of those startups and individual inventors who need the patent system to work in order to survive.

Reyna Splits from CAFC on Weight of General Industry Skepticism in Obviousness Analysis

The U.S. Court of Appeals for the Federal Circuit on Friday, April 29, held that the Patent Trial and Appeal Board (PTAB) erred in finding that Auris Health, Inc. had failed to demonstrate that the claims of Intuitive Surgical Operations, Inc.’s patent for robotic surgery systems were unpatentable as obvious. The CAFC said the PTAB impermissibly rested its motivation-to-combine finding on evidence of “general skepticism” about the field of invention and thus vacated and remanded.

Hirono and Tillis Give Vidal One Month to Answer Questions on Abuse of PTAB Process

Senators Mazie K. Hirono (D-HI) and Thom Tillis (R-NC) sent a letter yesterday to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal to express their concern over the 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,” explains the letter.

Patent Filings Roundup: Litigation Finance Disclosures in Delaware Standardized; Impossible Burger Patent Challenged; Slew of Discretionary Denials

With an average 33 Patent Trial and Appeal Board (PTAB) filings (one post grant review, the rest inter partes reviews[IPRs]), a relatively high number (89) of district court terminations (including some high-profile settlements), and a somewhat low number (63) of suits this week, we are rolling into May. Chief Judge Connolly of the U.S. District Court for the District Court of Delaware  filed a standing order in all of his cases requiring litigation funding disclosures; there were more filings by more Magentar entities (who, by last count, are up to 15 high-profile litigation funded campaigns), and more IPR counters; and still more IPRs (22 or 23) in the Israeli-based Bright Data assertion campaign. The patents there are a range, but are based, broadly, on Internet connectivity.

Federal Circuit Signals Appetite for Increased PTAB Discretion in Motions to Amend

Patent owners facing inter partes review (IPR) challenges have the option of filing a motion to amend as a contingency plan. This motion, accompanied by proposed substitute claims, allows the patent owner a fallback position if the Patent Trial and Appeal Board (PTAB) finds the original claims unpatentable. If successful, despite the unpatentability of the original claims, the patent owner maintains the substitute claims. While this sounds great in concept, the historical success rate of such motions is low. From October 2012 through March 2020, only 14% of motions to amend were granted. This improved slightly in 2020, to 25%, but dropped back to 18% in 2021 (calculated using data from Docket Navigator). The recent decision in Hunting Titan, Inc., v. DynaEnergetics Europe GmbH thus presents the somewhat rare case in which an amendment was granted by the PTAB and affirmed on appeal. That said, the Federal Circuit’s narrow holding does not indicate an easier future for patent owners’ motions to amend; indeed, the opposite may be true.

Patent Filings Roundup: Fintiv Denial in Light of NPE Suit Against Healthcare Co.; More Institutions in Troubled, Funded ParkerVision Campaign; Universal Studios Sued by German Ride Company

Patent filings were average this week, with 21 Patent Trial and Appeal Board (PTAB) petitions and 77 district court patent complaints filed (and 67 terminated). In the district courts, Joao, Cedar Lane, and DynaIP campaigns added a fair number of defendants, some interesting competitor-competitor cases cropped up, and Wepay Global Payments LLC continued its single-design-patent campaign, adding Wells Fargo. This week also saw a few discretionary denials, as detailed below.

Actions of USPTO Officials Performing the Director’s Functions and Duties During Director Vacancy are Void

Under the U.S. Constitution’s Appointments Clause, “Officers of the United States” generally are required to be nominated by the President “by and with the Advice and Consent of the Senate.”  This rule applies equally to the Director of the U.S. Patent and Trademark Office (USPTO), who has an important executive role with political accountability and therefore, by statute, must be Presidentially-Appointed and Senate-Confirmed (PAS). The Vacancies Reform Act of 1998 (VRA) provides that the President (and only the President) may direct an “acting” official to temporarily perform the functions and duties of the vacant PAS office. The VRA states that its mechanisms are “exclusive” of all other mechanisms for temporarily filling a vacant PAS office. On several occasions since 2013, including most recently with Commissioner Andrew Hirshfeld, the USPTO has adopted a modality for filling a vacancy in the office of the Director, not with an Acting Director as the VRA requires, but with a non-PAS official “designated” to “perform the functions and duties” of the Director.

Jump Rope Systems Asks CAFC for Initial En Banc Rehearing Challenging Collateral Estoppel Ruling in XY v. Trans Ova Genetics

On April 19, exercise equipment developer Jump Rope Systems filed a petition  with the U.S. Court of Appeals for the Federal Circuit (CAFC) seeking an initial hearing en banc to challenge a consent judgment  entered in a patent infringement case filed in the Southern District of Ohio. Jump Rope Systems is asking the full Federal Circuit to overturn its own decision in XY, LLC v. Trans Ova Genetics, L.C. (2018), arguing that preclusive effect cannot be given to invalidity determinations issued by the Patent Trial and Appeal Board (PTAB) because XY conflicts with U.S. Supreme Court rulings on collateral estoppel doctrine.

Terminating an IPR: File Your Settlement Agreement Without Concern—At Least For Now

Once an inter partes review (IPR) has been instituted at the Patent Trial and Appeal Board (PTAB), it will generally proceed to final written decision, unless the parties settle their dispute and agree to terminate the IPR. As a prerequisite to termination, the PTAB requires the parties to file their settlement agreement, as well as any collateral agreements, with the PTAB before an IPR will be terminated. Interestingly, 35 U.S.C. § 317(b) also provides that filed settlement agreements “shall be made available only to Federal government agencies on written request, or to any person on a showing of good cause.” This language has, understandably, caused some concern for parties about filing their settlement agreements with the PTAB. As a general matter, settlement agreements are highly confidential and could be harmful to either or both parties to the IPR if disclosed. Yet the language of Section 317(b) makes it at least facially possible for anyone to request access to these agreements without defining the circumstances under which the agreements could be disclosed.

New York Times Editorial Board Lobs Unfounded Criticism at Patent System, Iancu

The New York Times Editorial Board over the weekend penned an op-ed charging that the U.S. Patent and Trademark Office (USPTO) has “devolved into a backwater office that large corporations game, politicians ignore and average citizens are wholly excluded from.” The piece calls for an overhaul of the U.S. patent system and for new USPTO Director Kathi Vidal and Congress to “seize the opportunity…to modernize and fortify the patent system.” It includes input from Priti Krishtel of the Initiative for Medicines, Access and Knowledge (I-MAK)—which recently has been the subject of scrutiny by pro-patent lawmakers like Senator Thom Tillis (R-NC)—and Charles Duan, who has testified to Congress that patents deter genetic research and “bully and suppress true innovators.”

Federal Circuit Vacates PTAB Ruling After Failure to Address Cost Reduction as Factor in Obviousness Finding

Earlier this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded a decision by the Patent Trial and Appeal Board (PTAB) in a post grant review where the PTAB concluded that Everstar did not meet its burden to demonstrate the challenged claims were unpatentable as obvious because it failed to show a motivation to combine the asserted prior art. The CAFC found that the PTAB abused its discretion when it refused to consider whether cost reduction would have driven one skilled in the art to combine the asserted prior art.

Patent Filings Roundup: Denial of Me-Too Joinder under General Plastics; Magnetar Sub, Wielding LG Wireless Charging Patents, Sues Volkswagen

A light district court week saw just 37 new patent complaints filed (I believe, the lowest week of the year to date); statistically, the beginning of the year, month, and quarter are generally lower than the rest of the year in terms of patent filings, due primarily to the filing patterns of megafiler IP Edge and their proclivity to ramp up filings at the ends of months and quarters. There were 78 terminations (just above average). Frequent filer, RFC Lenders of Texas LLC, ensnared yet another local Texas company, this time Texas Southern Tire Mart LLC, in volume patent litigation; Intellectual Ventures refiled their new automotive OEM campaign outside of the Eastern District of Texas, moving to the Northern for certain OEMs; and Jack Henry Associates, as provider to many banks and websites of check deposit software, filed a declaratory judgment action against frequent filer, Lupercal LLC.

Vidal Takes the Helm as USPTO’s Second Congressionally Approved Woman Director

On Wednesday, April 13, Kathi Vidal was officially sworn in and began her role as the new Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). Chief Judge Kimberly Moore administered the oath of office, and Vidal now assumes her position at the helm of the agency and head of its 13,000 employees. She is the second woman to be confirmed by the Senate to the position. “I am excited to join America’s innovation agency,” said Vidal, according to a USPTO press release. “This nationwide workforce of more than 13,000 employees is one of the most talented and respected the world over, and I couldn’t be more thrilled to work with them to help bring more ideas to impact, including in key technologies and through inclusive innovation and entrepreneurship.”

Leahy/ Tillis Announce Bill to Balance PTAB Process

Last night, the Chairman and the Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property published an op-ed in The Hill on the important role the Patent Trial and Appeal Board (PTAB) plays in the U.S. patent ecosystem, and expressed their commitment to strong patent rights as a necessity for American innovation to flourish. “In order to ensure America’s continued dominance in all areas of innovation, we must have strong patent rights,” Senator Patrick Leahy (D-VT) and Senator Thom Tillis (R-NC) wrote. “However, for our patent rights to truly be strong, they have to be based on high-quality patents… The Patent Trial and Appeal Board (PTAB) plays a critical role in this process and is a necessary backstop to invalidate truly low-quality patents that do not represent true innovation and never should have been issued.”

Money, Media, Votes, and Passing H.R. 5874

All things in Washington are driven by money, media and votes. If you can deliver one or more of those things, you will get the results you want. Engaging in politics with this in mind is key to fixing the broken patent system by passing HR 5874, the Restoring American Leadership in Innovation Act (RALIA). Since no mortal can compete with Big Tech’s big bucks and their control of social media, and the media in general, the only lever remaining is delivering votes back home, or more importantly, delivering those votes to candidates who commit to supporting HR 5874.