Posts Tagged: "IPR"

During IPWatchdog LIVE 2021 in Dallas, Texas, I asked a handful of willing attendees for their thoughts on the impact of the America Invents Act (AIA) in anticipation of today, the ten-year anniversary of the day President Barack Obama signed the AIA into law. I began writing for Managing IP magazine in 2007 and remember well the lead-up to the law. The discussion centered mostly on the change from a first-inventor-to-invent to a first-inventor-to-file system, which was seen as a way to harmonize the United States with the rest of the world, but which many feared would be detrimental to U.S. innovation. Some of the most controversial provisions were ultimately dropped in order to get the law through Congress, and overall, the IP world was celebrating on September 16, 2011, that at least some action had been taken on reforming, and ostensibly strengthening, the U.S. patent laws.

When the America Invents Act (AIA) was before Congress a decade ago, it was heralded as the first comprehensive patent law since the 1952 Act. Ten years’ perspective on the new law, however, shows that its changes to patent policy have been more evolution rather than revolution. The AIA is simply the latest step in the long arc of moving U.S. law toward a more objective and logical patent system—and one that produces more accurate results.

Our recent IPR Intelligence report covers the inter partes review (IPR) filing activity at the Patent Trial and Appeal Board (PTAB) from July 1, 2016, through June 30, 2021. Over the period of our study (July 1, 2016, through June 30, 2021) a total of 7,582 IPR petitions were filed, which shows a 1.6% decline compared to the five-year period we covered in our fourth annual report last year (July 1, 2015, through June 30, 2020). Nine-hundred and thirty law firms have represented patent owners and petitioners, while 5,341 attorneys worked for these firms. In the last five years, 2,658 companies have been involved in one or more IPRs, out of which 1,275 were on the petitioner’s side and 1,630 were patent owners.

It was a heavy week for patent filings, with 78 new district court complaints and 41 new Patent Trial and Appeal Board (PTAB) petitions, all inter partes reviews (IPRs). IP Edge and Leigh Rothschild entities made up the bulk of those district court filings, while on the Board front, a number of long-running campaigns saw patents challenged, including the wide-ranging Express Mobile suits, some Divx [Fortress] challenges, and a number of challenges against the Xerox-owned Palo Alto Research Center.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued an order denying MaxPower Semiconductor, Inc.’s appeal and Petition for Writ of Mandamus with respect to the Patent Trial and Appeal Board’s (PTAB’s) decisions to institute ROHM Semiconductor USA, Inc.’s petitions for four inter partes review (IPR) proceedings of MaxPower patents. The five-page Order was authored by Judge Reyna over a 17-page partial dissent by Judge O’Malley. The majority first explained that a decision to institute IPR is non-appealable under 35 U.S.C. §314(d), which plainly “confirms the unavailability of jurisdiction” for the CAFC to hear the direct appeals. Section 314(d) also presents a challenge to the mandamus petition, said the court, because MaxPower did not meet the criteria necessary to invoke the “collateral order doctrine.”

On September 3, the U.S. Court of Appeals for the Ninth Circuit issued a pair of decisions in Nomadix, Inc. v. Guest-Tek Interactive Entertainment Ltd. on appeal from a grant of permanent injunction entered by the Central District of California. In one decision, the Ninth Circuit affirmed injunctive relief preventing Guest-Tek from filing petitions for patent validity trials at the Patent Trial and Appeal Board (PTAB) in violation of a forum selection clause in Guest-Tek’s licensing agreement with Nomadix. In the other decision, the Ninth Circuit vacated portions of an attorneys’ fees award to Nomadix that covered the legal costs incurred by Nomadix during Guest-Tek’s PTAB petitions.

The U.S. Court of Appeals for the Federal Circuit yesterday reversed the Patent Trial and Appeal Board’s (PTAB’s) finding that Campbell Soup Company, Campbell Sales Company, and Trinity Manufacturing, LLC did not demonstrate the claimed designs of Gamon, Inc.’s design patents would have been obvious over the prior art. The CAFC held that the designs were obvious because Gamon did not prove a nexus between commercial success and the claims, and because the evidence of Trinity’s copying did not overcome the strong evidence of obviousness provided by the prior art.

Weekly patent filings have settled into a roughly 60-complaint, 30-petition trend this year, and this week was no different; the district courts saw a handful of new LLCs sharing the same Delaware address, a slew of additions to existing campaigns, and another Acacia campaign launched – Atlas Global Technologies LLC. The Hilco entities, Rothschild entities, and DynaIP have all added a number of new defendants. Take a look.                                                  

On August 17, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed in part, reversed in part, vacated in part, and remanded two final written decisions from the Patent Trial and Appeal Board (PTAB or Board) involving inter partes review (IPR) proceedings that affirmed the patentability of two of Ironburg Inventions Ltd.’s patents.

The U.S. Court of Appeals for the Federal Circuit today issued two precedential decisions and one nonprecedential decision in cases involving Teva Pharmaceuticals and Eli Lilly, delivering wins and losses for each company. The cases relate to “humanized antagonist antibodies that target calcitonin gene-related peptide (‘CGRP’)” and methods of using such antibodies. All three cases were heard by Judges Lourie, Bryson and O’Malley, with Judge Lourie authoring the decisions.

Numbers were relatively stable last week, with the district courts seeing 57 new patent filings and the Patent Trial and Appeal Board (PTAB) seeing 25 petitions (two post grant reviews [PGRs] and 23 inter partes reviews [IPRs]). A big chunk of the PTAB action was against Ocean Semiconductor LLC by Applied Materials, Inc., who filed five against the litigation financed entity (Fullbrite Capital Partners, LLC), and six filed by Lumenis Ltd. against BTL Healthcare Technologies A.S in an apparent litigation-free freedom-to-operate action. Bank of America filed a few challenges against NantWorks; Rothschild subsidiaries filed a number of district court complaints; and two IPRs were filed and instituted against the IPValue Management, LLC-run Monterey Research semiconductor suit—one by Qualcomm, one by STMicroelectronics; and ditto for two by Freeman Capital Partners-run FG SRC LLC—one by Xilinx and one by Intel and Xilinx. 

A patent owner has filed a lawsuit in the United States District Court for the Western District of Tennessee against former U.S. Patent and Trademark Office (USPTO) Director Michelle Lee, and a number of other former USPTO officials, for allegedly depriving the plaintiffs “of their valuable property rights in quasi-judicial administrative proceedings before the USPTO’s Patent Trial and Appeal Board (‘PTAB’).” The complaint further claims that PTAB proceedings have been “tainted by various improprieties and underhanded tactics, designed to stack the deck against [plaintiffs] and in favor of their far more powerful opponents. In short, the system had been rigged all along, due to the unconstitutional actions of the Defendants named herein.”

During the Patent Public Advisory Committee (PPAC) quarterly meeting held today, participants provided an update on the Director Review process under the Supreme Court’s Arthrex v. Smith and Nephew ruling, among other announcements. Patent Trial and Appeal Board (PTAB) Senior Advisor and Judge Linda Horner noted that, since the ruling, 14 timely requests for Director Review have been received; 11 of those were for a batch of related inter partes reviews (IPRs). Hirshfeld this week issued two decisions on the first two requests, denying both; the rest remain pending.

In a relatively subdued week, the Patent Trial and Appeal Board (PTAB or Board) saw 35 challenges and the district courts 53 new patent filings. Those challenges included a slew against Centripetal Networks and Stratosaudio patents, as well as a number of memory authentication district court campaigns launched, including one major new non-practicing entity (NPE) suit by Causam Enterprises against Ecobee, Itron, Residio, and Alarm.com for patents related to power consumption.

The United States Court of Appeals for the Federal Circuit (CAFC) yesterday concluded that the Patent Trial and Appeal Board’s (PTAB’s) decision finding certain claims of Chemours’ patents obvious was not supported by substantial evidence and that the Board erred in its analysis of objective indicia of nonobviousness. As such, the CAFC reversed the decisions.