Posts Tagged: "IPR"

In United States v. Arthrex, No. 19-1434, 141 S.Ct. 1970 (Jun. 21, 2021), Chief Justice Roberts cured an Appointments Clause defect in the Patent Trial and Appeal Board’s (PTAB’s) organic statute by holding that 35 U.S.C. § 6(c) “cannot constitutionally be enforced to the extent that it[] prevent[s] the Director from reviewing final decisions rendered by APJs.” Arthrex, slip op. at 21. Henceforth, rehearings are no longer the exclusive domain of PTAB panels, and the U.S. Patent and Trademark Office (USPTO) must provide at least one path of review that flows through the agency head…. This article discusses a number of issues of administrative law that must be addressed before the USPTO can proceed. The PTAB now resembles a poorly-maintained building—after decades of benign neglect, and more than a little old-fashioned cheating to evade work that’s required by the statute, a stress has induced a collapse.

District court patent filings rebounded a bit with 80 this week, buoyed by a new financial services campaign, Peregrin Licensing LLC, from an older publicly traded non-practicing entity (NPE), Quest Patent Research Corporation; further bolstering the numbers were 10 new suits in an ongoing Equitable IP campaign against retailers, Consolidated Transactions LLC. As for the Patent Trial and Appeal Board (PTAB), filings were normal, with 27 inter partes reviews (IPRs) and two post grant reviews (PGRs). The PTAB this week denied a number of IPRs under Fintiv related to ongoing International Trade Commission (ITC) trials (with the usual placeholder stayed district court litigations attached); this week it was Roku benefitting from Fintiv, with the latest Universal Electronics IPRs getting denied. The long-running Ancora Technologies, Inc. assertion has moved on to additional defendants and a number of parties filed IPRs against the Magentar-Capital-backed Arigna Technologies this week.

After last week’s spike in complaints, things returned to steady-state this week, with plaintiffs filing 58 complaints and patent challengers filings 26 petitions (one post grant review [PGR] and 25 inter partes reviews [IPRs]). There were four denials under Fintiv at the Board, all related to upcoming trial dates and a stipulation the Board found fault with in Cisco Systems v. Estech. A surprising number of challenges against semiconductor-related patents being asserted by NPEs (most with litigation funding backing, such as by Starboard Value, Vector Capital, and Cambridge Partners) were instituted this week, perennial filers K.Mizra and Blue Spike had new complaints, Coinbase filed a declaratory judgment against frequent filer and NPE Modern Font Applications, and there were a number of pharmaceutical litigations initiated that bear scrutiny.

It was a busy week for patent filings in the district courts, with 113 complaints filed, fueled particularly by nearly 50 (!) IP Edge complaints, primarily filed in the Western District of Texas’s Waco Division; the Patent Trial and Appeal Board (PTAB), on the other hand, was slightly down, with 29—the bulk coming from Intel counterpunching with seven challenges against AQUIS-asserted patents. 

This week, the U.S. Patent and Trademark Office announced that it would be implementing an interim rule at the agency in response to the U.S. Supreme Court’s late June decision in Arthrex v. Smith & Nephew. Today, the Office held a Boardside Chat with Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO; Scott R. Boalick, Chief Administrative Patent Judge; Jacqueline W. Bonilla, Deputy Chief Administrative Patent Judge; and Scott C. Weidenfeller, Vice Chief Administrative Patent Judge to explain how the interim process will work and answer questions submitted by the public. Janet Gongola, Vice Chief Judge for Engagement at the PTAB, moderated the panel.

It was a pretty normal week patent filings-wise, with 65 district court complaints and 38 Patent Trial and Appeal Board (PTAB) petitions filed, all inter partes reviews (IPRs). “Frozen Assets Asserted”: I’ve heard of castles built on sand and castles built in the sky, but this patent is about those built of ice—and the apparent cutthroat nature of the niche but seemingly quite profitable business. Ice Castles, LLC, according to them, is a Utah-based “awe-inspiring, must-see winter phenomenon built with hundreds of thousands of icicles that brings fairy tales to life.” Per them, founder Brent Christensen began experimenting with ice buildings as a hobby in the winter of 2009, and the following year, made one for a local resort; he patented his method of making these ice structures, which was granted in 2013. His business flourished, as he started both making ice castles, selling tickets, and leasing and managing other destination locations in other states, including New Hampshire. Well, this week they sued Harbor Enterprises Marketing & Productions, Lester Spear, and Cameron Clan Snack Co. LCC on U.S. Patent 8,511,042, claiming the Maine-based company had constructed an infringing ice castle in Maine in 2021, and charged an admission fee, including multiple photos of the Maine location in their complaint.

A working definition of inertia is the tendency of a body to maintain its state of rest or uniform motion unless acted upon by an external force. As it did in Oil States (S.C. 2018), inertia appears to have played a role in the Supreme Court’s decision in the United States v. Arthrex, in which the central dispute was the remedy to address the unconstitutional appointment of administrative patent judges (APJs). Possible remedies included vacating hundreds or thousands of prior final decisions by unconstitutionally appointed APJs, requiring all APJs to be confirmed by the Senate and then rehear previously-decided reviews, finding the entire statutory structure unconstitutional and handing invalidity/unpatentability determinations back to Article III Courts, removing employment protections for APJs (as the Federal Circuit did), or adding a layer of review so that inferior officers had appropriate responsibility under the Appointments Clause. Faced with these possibilities, the Supreme Court’s holding maintains the inertia of the Patent Trial and Appeal Board (PTAB) and again solidifies its role in patent litigation today.

The Supreme Court has issued its ruling in Arthrex v. Smith & Nephew, taking a different approach to curing the statute than did the U.S. Court of Appeals for the Federal Circuit (CAFC) in 2019, and ultimately vacating and remanding the case back to the Acting Director of the U.S. Patent and Trademark Office (USPTO). While the CAFC held that the statute could be severed and rendered constitutional by making Patent Trial and Appeal Board (PTAB) Administrative Patent Judges (APJs) removeable at will, the Supreme Court said that remedy was not sufficient. The Court said: “[R]egardless whether the Government is correct that at-will removal by the Secretary would cure the constitutional problem, review by the Director better reflects the structure of supervision within the PTO and the nature of APJs’ duties.”

It seems non-practicing entity (NPE) semiconductor/chip litigation has really come to dominate both the Patent Trial and Appeal Board (PTAB) and the district courts’ dockets this past year. Another average week at the PTAB saw 26 patent filings (five post grant reviews [PGRs] and 21 inter partes reviews [IPRs]), and the district courts saw another heavy week, with 89 new complaints. A slew of IPR challenges on chip patents owned and asserted by Arbor Global Strategies, LLC [Arbor Company, LLP] were instituted; Google, Samsung and LG were denied institution on IPR challenges for five litigation-related patents under Fintiv and a Waco-division Western District of Texas trial date; a slew of IPRs against NPE Bell Semiconductor, LLC [owned by Hilco d/b/a Hilco Global] were instituted; Qualcomm earned a few more institutions against the Vector Capital Corp.-NPE Monterey Research; and Huawei earned institutions against some of the dozen or so patents Craig Etchegoyen’s WSOU entities asserted against them before Judge Albright in the Waco division of the Western District of Texas.

On May 28, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the Patent Trial and Appeal Board (Board), holding certain claims of U.S. Patent No. 8,554,579 (the ‘579 patent) are invalid as obvious under 35 U.S.C. §103. Baxter Corporation Englewood (Baxter) is the owner of the ‘579 patent, which discloses “[s]ystems for preparing patient-specific doses and a method for telepharmacy in which data captured while following [a protocol associated with each received drug order and specifying a set of steps to fill the drug order] are provided to a remote site for review and approval by a pharmacist.”

A quiet week resulted in 28 petitions at the Patent Trial and Appeal Board (PTAB), mostly related to preexisting suits, though with a perhaps surprising number of semiconductor patents challenged, and three Qualcomm challenges to Monterey Research (i.e., Vector Capital) patents were all instituted; in general, the district courts had a light week with 55 patent filings, many complaints adding new defendants for old campaigns. Some of the recently filed complaints in the longest-running Blitzsafe campaign against were dismissed without prejudice against automotive OEMs; and probably most notable, in a Fintiv denial, a panel cited the global pandemic and the uncertainty of trial schedules in weighing that factor neutrally (while still exercising their discretion for other reasons), as discussed below. Sonos hit back with inter partes reviews (IPRs) against Google patents in their ongoing dispute.

The Patent Trial and Appeal Board (PTAB) had the usual 30 or so petitions this week (32, to be exact), with a fair number of procedural denials of concurrently filed petitions (i.e., the one-petition rule from the July 2019 updated Trial Practice Guide). District court patent filings sat at 71, with a significant number of Leigh Rothschild suits adding new defendants

On May 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the decision of the Patent Trial and Appeal Board (PTAB/ Board) in an inter partes review (IPR), holding the PTAB properly construed the claim language.

In April 2018, Apple Inc. filed a petition for IPR, alleging that all 25 claims of U.S. Patent No.  8,539,552 (“the ‘552 patent”) owned by Uniloc 2017 LLC were unpatentable. Apple Inc. v. Uniloc 2017 LLC, No. IPR2018-00884, Petition at 1 (P.T.A.B.). During the IPR, the PTAB held claims 1-17 and 23-25 of the ‘552 invalid for obviousness in view of U.S. Patent No. 6,324,279 (“Kalmanek”). Uniloc then appealed the decision. On appeal, Uniloc argued that the Board’s decision to invalidate the claims of the ‘552 patent resulted from an erroneous construction of a claim term. In its cross-appeal, Apple argued that the PTAB erred in holding that Apple failed to show the remaining claims of the ‘552 patent, claims 18-22, would have been obvious in view of Kalmanek. The CAFC upheld the PTAB on all issues.

After almost 200 district court patent filings last week, things settled back into their recent rhythm, with an average 66 district court complaints (including some “Schedule A” brand anti-counterfeiting complaints) and 28 Patent Trial and Appeal Board (PTAB) petitions filed (all inter partes reviews [IPRs]) this week. There were no IP Edge or Rothschild complaints this week, after last week’s busy filings. There were no Fintiv denials again this week; the PTAB petitions included three IPRs filed by Microsoft against Daedalus Blue LLC against patents originally assigned to IBM (more below), as well as various patents related to ongoing challenges (like the rolling Lasik J&J/Alcon fight), more fracking IPRs, more Peloton-related challenges (those bikes make big bucks!), and a curious rechargeable-battery suit between a Taiwanese U.S. patent holder and a U.S. rechargeable battery company based in Michigan, A123 Systems, LLC. Those batteries are supplied to NEC and other device manufacturers, so what looks at first blush like a small suit probably is set to have broader implications. Nokia had a Google challenge denied, and two Ideahub [Synkloud] challenges by Microsoft were denied as well, on the merits; and more Uniloc/Fortress IP claims were cancelled on final written decision.

The district courts saw an explosion of new patent filings last week (183, more than 100 over the weekly average to date), driven largely by dozens and dozens of new IP Edge complaints filed by an array of entities. There were no discretionary denials at the Patent Trial and Appeal Board, and Board filings were normal, with 32, including another post grant review (PGR) in the ongoing iRobot/SharkNinja battle. A number of Longhorn Vaccine’s diagnostics patents were challenged by competitor Spectrum Solutions LLC; and Johnson & Johnson continued to be challenged at the Board by Alcon on various Lasik patents.