Posts Tagged: "PTAB"

Patent Filings Roundup: Magentar Launches Tenth and Eleventh Campaign; Joao Entity Hits State Healthcare; Board Terminates Eight Petitions Pre-Institution Over Patent Owner Objections

A normal week at the Patent Trial and Appeal Board and a heavy week in the district courts saw 100 new patent complaints filed and 30 petitions before the Board; there were 79 district court terminations as well, as cases settled quickly and a number of withdrawals or refilings continue in and out of the Western District of Texas. Intellectual Ventures—hearing footsteps from the Federal Circuit’s mandamus of Judge Albright transferring automotive cases out of his jurisdiction for lack of venue over car companies—has refiled Eastern District of Texas complaints against car companies in the Northern District of Texas, presumably because those companies have factories or some other serious presence there.

Priorities: The IP Community Has Its Say on What Should Top Vidal’s To Do List

With Kathi Vidal now confirmed as the next Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO), IPWatchdog reached out to stakeholders for their take on what she should prioritize on her first days in office. As you might imagine, the responses varied widely, from taking quick action on policy-side issues to spending some time just listening to her staff. Vidal is only the second woman to serve as a Senate-confirmed Director of the USPTO and she has been a leader on diversity initiatives. Many are looking forward to her unique perspective, particularly at a time when Congress has been calling on the USPTO to improve its representation for women and minorities in patenting.

PTAB Denies OpenSky’s Request for Rehearing But VLSI Cases Highlight Broader PTAB Problems

On March 28, the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) denied petitioner OpenSky Industries’ request for rehearing of an earlier decision denying institution of inter partes review (IPR) of one of two VLSI patents supporting a massive $2.2 billion infringement damages verdict in U.S. district court. The ruling is the latest chapter in a series of challenges to VLSI’s patent claims, which has forced VLSI to run a gauntlet arguably demonstrating that the PTAB fails to function as the alternative forum for speedy validity resolutions originally envisioned by Congress when it passed the America Invents Act (AIA) into law back in 2011.

Patent Filings Roundup: Intel Cancels Qualcomm Claims on Remand; New Rideshare, Cloud Storage NPE Campaigns Launched

Some new assertion entities popped up this week, including a high-stakes campaign filed by LS Cloud Storage Technologies LLC (a Waco vintage, if from 2016) on a couple of data-sharing patents (one very old, one somewhat new, U.S. 6,549,988 and U.S. 10,154,092). There was also a new ride-sharing NPE campaign from Fare Technologies LLC (another older LLC with apparent ties to monetizers) against Uber and Lyft on just one patent, RE46727. By the numbers: the district courts saw 70 new patent complaints and another 106 terminated cases this week; the Patent Trial and Appeal Board (PTAB) had their now-usual 25 petitions. 

CAFC Upholds PTAB Precedential Opinion Panel Decision Despite ‘Problematic’ Reasoning

On March 24, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel’s (POP’s) decision allowing patent owner DynaEnergetics Europe GmH to amend its claims, and also affirmed the PTAB’s decision that the original claims of the patent were unpatentable. Hunting Titan, Inc. petitioned for inter partes review of claims 1–15 of the U.S. Patent No. 9,581,422, asserting grounds of unpatentability based on anticipation and obviousness, including allegations that the claims were anticipated by U.S. Patent No. 9,689,223 (Schacherer). The Board instituted trial on all grounds and found all of the original claims unpatentable.

Patent Filings Roundup: Fintiv Files Against Paypal; PPC Broadband Patents Challenged Based on Successful Reexams; Last CBM Decision Issues

It was a rather light week at the Patent Trial and Appeal Board (PTAB) with just 17 new petitions (the lowest in recent memory), with district court patent filings at 69—a few more than usual—and 60 more terminations. Samsung lost a series of five chip inter partes reviews (IPRs) at institution against an LED Wafer Solutions LLC (apparently associated with Oso IP) on the merits (they and Seoul Semiconductor were the only two plaintiffs yet sued); PPC Broadband got some IPRs from Amphenol based in large part on family members having been cancelled earlier in reexam on the same grounds; Raymond Anthony Joao entity Beteiro LLC filed a few further cases; Caselas, another of his entities, has now sued upwards of 40 banks on five patents of similar progeny; and there were lots of file-and-settle terminations in the district court, per usual. And what I believe is the final covered business method review (CBM) to be filed and pending has concluded with the claims being cancelled. The claims there were directed to currency trading systems.

VLSI/Fortress IP Patents Likely Invalid Despite OpenSky’s Bad Behavior

You’ve probably heard about all of the VLSI drama: the eye-popping $2.18 billion judgment won by non-practicing entity VLSI (funded by Fortress IP), mysterious post-judgment inter partes reviews (IPRs) filed against the VLSI patents, and finally the now-notorious email from OpenSky offering to disrupt their own IPR in exchange for a fee. Folks have jumped all over the email from OpenSky for its obvious bad behavior, but they are also using it as an indictment of the entire Patent Trial and Appeal Board (PTAB). What is noteworthy here is not the email—this type of behavior is extremely rare. The real story here is what the system got right, and where it failed.

Zaxcom Asks Full Federal Circuit to Clarify Court-Created Confusion on Presumption of Nexus

In February, the U.S. Court of Appeals for the Federal Circuit (CAFC) agreed with the Patent Trial and Appeal Board’s (PTAB’s) decision that the original claims of Zaxcom’s U.S. Patent No. 9,336,307 for Engineering Emmy® and technical OSCAR award-winning wireless microphone technology were unpatentable as obvious, but upheld the substitute claims Zaxcom had proposed. Now, Zaxcom has petitioned the court for rehearing en banc, arguing that the CAFC’s precedent in Fox Factory, Inc. v. SRAM LLC, 944 F.3d 1366 (Fed. Cir. 2019), “confused the law” regarding a rebuttable presumption of nexus.

Patent Filings Roundup: Heavy District Court Docket Sees Fortress Biotech ANDA Litigation; WePay Expands GUI Design Patent Assertion Against Major Online Payment Systems

It was another heavy week in the district court with over 100 new patent complaints filed, 64 terminated (mostly file-and-settle), and an average 26 Patent Trial and Appeal Board (PTAB) cases (one post grant review and 25 inter partes reviews). It was also another week with about half of all parties briefing Fintiv, but no denials, begging the question, “Why are parties being forced to brief it in the first place?” Intel and Xilinx combined to cancel a number of litigation-funded chip patents from Arbor Global Strategies and FG SRC LLC [the latter funded by Freeman Capital Partners]; a number of Fortress-funded subsidiaries were challenged; another 29 IP Edge subsidiary suits; some interesting pharmaceutical action; and companies WebRoot and OpenText, inc. have launched a new assertion campaign against Trend Micro, Kapersky Labs, CrowdStrike, and Sophos on cybersecurity products.

CAFC Delivers Guidance on Presumption of Obviousness, Negative Claim Limitations in Win for Generic Drugmaker

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled on Monday that the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) correctly held certain claims of Almirall, LLC’s U.S. Patent 9,517,219 for an acne treatment invalid as obvious. Almirall appealed the PTAB’s final decision in IPR2018-00608, in which the Board had found that the ‘219 patent, which covers methods of treating acne or rosacea, would have been obvious over the prior art at the time of invention.

CAFC Affirms PTAB Ruling that Ballistic Parachute System Patent Claims Are Obvious

On March 10, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB’s) obviousness determination and its denial of patent owner Hoyt Fleming’s motion to amend the asserted claims of the U.S. Patent No. RE47,474. Cirrus Design Corp. petitioned for inter partes review of multiple claims, including claims 135-139, of the ’474 patent. During the proceeding, Fleming moved to amend, seeking to replace the asserted claims with proposed substitute claims. The Board concluded that claims 137-139 were unpatentable as obvious over the combination of Cirrus Design’s Pilot Operation Handbook for the SR22, Revision A7, (Oct. 10, 2003) (POH) and U.S. Patent No. 6,460,810 (James). The Board further found that Fleming’s proposed amended claims did not meet the statutory and regulatory requirements for patentability because they lacked written description support and thus constituted new matter. On appeal, Fleming argued the Board erred in determining that the asserted claims are unpatentable and in denying his motion to amend.

Senators Take Aim at Chinese Anti-Suit Injunctions with ‘Defending American Courts Act’

A bipartisan group of five U.S. senators have introduced a bill to amend Chapter 28 of Title 35 of the U.S. Code to include language that would “combat corrupt Chinese Courts from issuing ‘anti-suit injunctions,’” according to a joint press release issued by the senators today. Senators Thom Tillis (R-NC), Chris Coons (D-DE), Tom Cotton (R-AR), Mazie Hirono (D-HI), and Rick Scott (R-FL) introduced the bill on March 8. An anti-suit injunction is an injunction issued by a foreign court to limit the rights of parties to pursue litigation in U.S. courts.

CAFC Affirms ITC Denial of Broadcom’s Request for Ban on Renesas Products Under Section 337

On March 8, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed decisions by the International Trade Commission (the Commission) and the Patent Trial and Appeal Board (the Board or PTAB) both 1) declining to ban Renesas Electronics Corporation and other companies from importing into the United States products alleged to infringe upon Broadcom Corporation’s two patents and 2) finding certain claims of Broadcom’s patents obvious. Broadcom filed a complaint at the Commission alleging a violation of 19 U.S.C. § 1337 (Section 337) based on the importation of products by Renesas and other companies that are asserted to infringe U.S. Patents 7,437,583 and 7,512,752. Broadcom’s ’583 patent is “directed to reducing power consumption in computer systems by ‘gating’ clock signals with circuit elements to turn the signals ON and OFF for downstream parts of the circuit.” The ’752 patent is “directed to a memory access unit that improves upon conventional methods of requesting data located at different addresses within a shared memory.”

Patent Filings Roundup: Realtor Files IP Edge Declaratory Judgment in Hawaii After Demand Letter; Dog Collar IPR Instituted Over Lengthy Fintiv Arguments; IP Edge Files Another 25+

It was a banner district court week, with 104 patent filings and 64 cases terminated, mostly file-and-settle non-practicing entity (NPE) litigation, and 26 Patent Trial and Appeal Board (PTAB) cases, including Nokia challenging NPE TQ Delta, LLC; Dexcom, Inc. filing against Abbot Diabetes Care Inc.; and Samsung filing against the Fortress IP-funded Netlist, Inc. In a week where IP Edge filed almost 30 new district court cases, one letter recipient filed a declaratory judgment (DJ) action…. This isn’t the first time this year a party has DJ’d IP Edge (a relative rarity given how small the sums involved are), suggesting either that smaller companies are getting fed up or that their campaigns have been broadly applied.

End of a Patent Battle, Beginning of a Licensing Fight For CRISPR

By now, news of MIT and Harvard’s Broad Institute’s victory over the CVC group (the University of California-Berkeley, the University of Vienna, and Emmanuelle Charpentier) in a dispute over genome-editing CRISPR technology has spread like wildfire in the biotech industry and academia. To recap, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) ruled that the Broad Institute (Broad) was the first to invent single-guide CRISPR-Cas9 gene-editing technology for use in eukaryotes. Furthermore, the judges ruled that “CVC fails to provide sufficient, persuasive evidence of an earlier reduction to practice or conception, as they are legally defined, of each and every element of Count 1 before Broad’s evidence of reduction to practice.” While the decade-long patent battle over the Nobel Prize-winning technology might have come to an end with Broad breathing a sigh of relief and CVC contemplating whether to take it to the next level, this has left some biotech companies scrambling to renegotiate their licensing agreements.