IPWatchdog.com is in the process of transitioning to a newer version of our website. Please be patient with us while we work out all the kinks.

Posts Tagged: "St. Regis"

Still No Answer From PTAB on Apple Sanctions Request Against VoIP-Pal After Six Months

And yet, despite this apparent vindication of VoIP-Pal’s patents against the strongest of odds in an executive branch tribunal where APJ panels are stacked in the interest of achieving policy objectives, VoIP-Pal and its current CEO Emil Malak still find themselves to be stuck in patent purgatory over a sanctions motion which the PTAB hasn’t decided for more than half a year… The fact that ex parte communications have caused such a stir in Apple’s IPRs against VoIP-Pal is very interesting given how the PTAB has reacted to allegations of such communications in the past. Anyone who followed the St. Regis Mohawk Tribe’s case at the PTAB will likely remember that the agency revoked the tribe’s ability to file motions in response to a request for discovery on the potential of political pressure caused by ex parte communications between APJs assigned to the case and their superiors at the PTAB. The PTAB denied that motion and restricted the St. Regis tribe’s ability to file motions within a month of St. Regis’ discovery request. That the PTAB has dragged its feet for more than six months on Apple’s request for sanctions on ex parte communications without the same level of punitive response is very telling.

PTAB Denies St. Regis Mohawk Assertion of Sovereign Immunity

The Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office denied the Motion to Dismiss filed by the Saint Regis Mohawk Tribe. The Tribe asserted sovereign immunity and requested the IPRs be dismissed. The PTAB denies the request finding an IPR to not be an exercise of power over the Tribe… And therein lies the problem the PTAB faces. The Administrative Patent Judges routinely demonstrate an acute lack of understanding relative to very basic legal matters.

PTAB Chief Attempts to Explain Expanded Panel Decisions, Sovereign Immunity at PPAC

Given the PTAB’s ability to make decisions precedential, Ruschke’s argument about how important and meaningful it is to have expanded panels to ensure uniformity misses the mark. The PTAB does not designate many cases as precedential (another problem for a different day), but it is possible for a three-judge panel decision to be made precedential. In fact, there have been a number of cases that have been pronounced as precedential by the PTAB where the decision was made by a three-judge panel. That being the case, why is it necessary for any expanded panels unless PTAB leadership is trying to influence Administrative Patent Judges despite the lack of a precedential designation? And doesn’t such an attempt to influence call into question the decisional independence of APJs?

Allegations of ex parte PTAB Communications raise more questions of due process, APA violations

Apple raised concerns of due process implications of ex parte communications and their impact on its trial. Apple’s motion demonstrates that PTAB does not publish ex parte communications into the administrative record as required by the APA, which is the exact issue Saint Regis requested discovery on and was denied… The PTAB’s decision to largely prevent the Saint Regis tribe from filing any additional papers in the case to which they are a party seems remarkable given the fact that the PTAB has opened up the proceedings of the Saint Regis trials to allow amicus briefings from third parties with an interest in the case. So, it would seem that the PTAB seems more interested in giving the agency’s supporters a say in these cases than the actual patent owner whose property rights are on the line, hardly the result one would anticipate if the PTAB were a court operating with any true sense of justice.

St. Regis Tribe requests oral hearing, seeks discovery on political pressure at PTAB

The St. Regis tribe is seeking discovery on due process concerns posed by the potential of political or third-party pressure asserted to “reach an outcome inconsistent with the binding Supreme Court and Federal Circuit precedents.”… The St. Regis tribe is seeking the oral hearing to push for discovery in a total of 18 topics. These topics include the makeup of the panels in the St. Regis proceedings, the date each APJ was added to the panel, how the makeup of the panel was decided, who determined the makeup of the merits panel, when the decision on the panel’s makeup was made as well as the disclosure of all ex parte communications concerning the St. Regis case. St. Regis is also seeking communications made on the sovereign immunity issue between specific APJs, including APJs Jacqueline Harlow and Jennifer Bisk.

The Top Trends in Patent Law for 2017

As we mark the close of yet another year, we’re provided with a perfect opportunity to look back on the previous twelve months and see what has transpired. No one could call it a good year for patent owners (except those with the largest pockets, of course) starting with the United States’ 10th-place ranking among national patent systems in the U.S. Chamber of Commerce’s IP Index, and it didn’t appear as though any weaknesses in uncertain patentability across the U.S. technological landscape were addressed in a positive manner this year. It’s inevitable that the ball will drop on New Year’s Eve and calendars everywhere will turn from 2017 to 2018. Whether the U.S. federal government will be able to stop the death knell sounding doom for our nation’s patent system, however, is still anyone’s guess and it seems far from likely.

PTAB: State Waives Eleventh Amendment Immunity by Filing Patent Infringement Lawsuit

An expanded panel of the PTAB, in a majority opinion authored by Chief Judge David Ruschke, agreed with the University of Minnesota that an IPR proceeding is an adjudicatory proceeding of a federal agency from which state entities may be immune. Nevertheless, the PTAB ruled that the University of Minnesota had “waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.”

Is Brookings Pushing an Efficient Infringer Narrative with Biased Panel Discussion?

Unfortunately, there’s every indication that today’s event at Brookings will feature more of the same kind of misguided rhetoric on perceived issues with the patent system which don’t truly exist. The evidence for this starts with the moderator for the day’s final roundtable discussion, titled Realigning Incentives to Increase Patent Quality. The moderator for this discussion will be Tim Lee, senior reporter of tech policy for Ars Technica. Lee has written in the past on the effects of “ridiculous patent litigation” and has given space to viewpoints which want to limit patentability in certain sectors, such as in business methods. Lee has also been very critical of appellate court decisions in patent cases in recent years to the point that assertions he’s made on case law regarding the patentability of software inventions border on the ridiculously absurd. This individual, who has a clearly anti-patent viewpoint, will be controlling the discussion during the final panel roundtable on patent policy.

PTAB Chief Ruschke says Expanded Panel Decisions are Conducted in Secret

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.

Double jeopardy at the PTAB forces Allergan and others to seek sovereign immunity defenses

The PTAB subjects all patent owners to double jeopardy, but the situation is particularly bad for pharmaceutical companies which already have to face a Congressionally-mandated validity review process under the Drug Price Competition and Patent Term Restoration Act, colloquially known as Hatch-Waxman. This law creates a regime by which a generic drugmaker can file an abbreviated new drug application (ANDA) with the U.S. Food and Drug Administration (FDA). The branded pharmaceutical listed in the Orange Book will be covered by patents but the generic drugmaker can include a Paragraph IV certification in the ANDA, a declaration that the patents covering the Orange Book-listed drug are unenforceable and invalid. When a company like Allergan has to face Hatch-Waxman validity trials in federal district court and serial IPRs at the PTAB, it turns Allergan’s Restasis patents into piñatas taking hit after hit at multiple forums before being finally ripped asunder at some point.

Indian Tribe files Motion to Dismiss RESTASIS Patent Challenge based on Sovereign Immunity

Earlier today the Saint Regis Mohawk Tribe filed a Motion to Dismiss in six separate inter partes review (IPR) proceedings relating to the Allergan drug RESTASIS®. The RESTASIS® patents were recently all assigned by Allergan to the Tribe, with the Tribe granting back to Allergan an exclusive license… As the Motion to Dismiss points out, the petitioners can have an opportunity to challenge these RESTASIS® patents in federal district court. “The Tribe will not assert sovereign immunity in the Eastern District of Texas case,” the Motion to Dismiss reads. ” So dismissing this case does not deprive the Petitioners of an adequate remedy; it only deprives them of multiple bites at the same apple.”

Allergan’s patent transaction with St. Regis Mohawks could presage more arbitrage patent transactions

News of the St. Regis patent transaction has sparked interest in others pursuing similar arbitrage arrangements that provide revenue streams to Native American tribes outside of gambling and tobacco. According to Shore, there’s a lot of interest in pursuing such deals in sectors outside of pharmaceuticals. White seemed confident that other tribes would soon pursue their own similar IP deals. “There are 500 tribes in the U.S.,” White said. “There is a lot of media surrounding this and there is a lot of money. There will be other tribes.” Small operating companies have plenty of reason to contemplate such a transaction of their own patents themselves, Shore said. “There may be no IPRs filed yet, but they may be looking to do this preemptively so that when they engage in an enforcement campaign, they have removed the risk of IPR.”

Mylan calls Allergan’s patent deal with Indian tribe a “sham” transaction in PTAB hearing on sovereign immunity defense

The tribe is raising a sovereign immunity defense in the case as the tribe is a sovereign entity which is not amenable to a suit unless it consents or Congress abrogates its immunity. Shore argued that the sovereign immunity defense is based on binding Supreme Court precedent. “It would frankly be unprecedented for the board to deny the tribe the right to seek a dismissal before conducting the hearing on the merits,” Shore said… On seven occasions during the call, Torczon called the sale of the patents to the St. Regis tribe a “sham” transaction, arguing that the tribe didn’t purchase the patents but rather were paid to take them. Torczon drew parallels between the patent sale and racketeering cases in the context of lending fraud. “So facially this transaction is a sham.