Posts Tagged: "post grant procedures"

On September 6, New Vision Gaming and Development Inc. (New Vision) filed a brief with the U.S. Court of Appeals for the Federal Circuit (CAFC) on return from remand after the U.S. Patent and Trademark Office (USPTO) denied its request for Director Review. The case relates to a Patent Trial and Appeal Board (PTAB) decision canceling all claims of U.S. Patent No. 7,325,806 (‘806 patent) and was previously appealed to the CAFC. But since the last appeal, a report demonstrating evidence that PTAB judges are influenced by U.S. Patent and Trademark Office (USPTO) leadership gives new weight to New Vision’s arguments, says the brief.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal on September 7 granted sua sponte Director Review and affirmed a Patent Trial and Appeal Board (PTAB) decision denying rehearing of the Board’s decision not to institute a request for inter partes review (IPR) by NXP USA, Inc. The ruling clarified that Sotera-type stipulations submitted after an institution denial cannot serve as a basis for granting rehearing. In the underlying case, the PTAB denied institution of an IPR relating to IMPINJ, Inc.’s U.S. Patent No. 10,776,198 B1 under 35 U.S.C. § 314(a), in view of Apple Inc. v. Fintiv, Inc. Most relevant to Vidal’s Director Review decision, NXP in its rehearing request “submitted a stipulation agreeing that, should trial be instituted in this case, Petitioner will not pursue any grounds based on the [prior art] references relied on in this IPR matter.”

On September 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision by the Patent Trial and Appeal Board (PTAB) finding that the PTAB did not improperly place the burden of persuasion for proving unpatentability of proposed substitute claims raised sua sponte by the Board on Nike and that substantial evidence supports the PTAB’s obviousness analysis. The decision comes after two prior rulings by the CAFC in related cases between Nike and Adidas. The present appeal concerned the PTAB’s determination that proposed substitute claim 49 of Nike’s U.S. Patent No. 7,347,011 (‘011 patent) was unpatentable as obvious.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal on August 22 issued a decision granting sua sponte Director Review and Affirming the Decision on Institution in Zynga Inc. v. IGT, IPR2022-00199, U.S. Patent No. 7,168,089 B2. Vidal determined that the interference estoppel provision of 37 C.F.R. § 41.127(a)(1) does not apply to trial and preliminary proceedings before the Patent Trial and Appeal Board (PTAB) and the PTAB was correct in holding that Petitioner should not be barred from pursuing inter partes review based on interference estoppel.

The back-to-school lull is in full effect this week, with 54 district court patent filings, 88 terminations, and 21 new Patent Trial and Appeal Board (PTAB) filings, all inter partes reviews (IPRs), with all filings slightly below average numbers. This week saw more Express Mobile, Inc. institutions at the Board, suggesting that, of the five rather widely asserted assets (hundreds of suits against hundreds of defendants), all five are likely invalid for various reasons. Qualcomm in an IPR cancelled some of the semiconductor patents being asserted via the University of New Mexico; public records indicate that UNM has been acting as a vehicle for assertions in the space, and is one of the more aggressive universities to spin out NPEs for suit.  Google lost a patent to a Phillips challenge against FitBit; and a lot of activity from frequent entities managed by Jeffrey Gross, including a one-patent (expired) case against wearable companies that has been bought and sold a number of times over the past few years; RPX appears to have a license.

Yesterday, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued a precedential sua sponte Director Review Decision in Code200, UAB v. Bright Data, Ltd., IPR2022-00861 and IPR2022-00862 Paper 18 (Aug. 23, 2022), clarifying the application of Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) in denying decisions to institute inter partes review (IPR) proceedings. The Patent Trial and Appeal Board (PTAB) denied institution of the two IPRs on July 25, 2022, explaining that the General Plastic factors weighed in favor of denial. Specifically, addressing Factor 1, which asks “whether the same petitioner previously filed a petition directed to the same claims of the same patent,” the PTAB said that the fact the Board had not evaluated the similar patentability challenges brought by the petitioner on the merits did not outweigh the petitioner’s failure to offer a stipulation agreeing not to raise the grounds asserted in the present IPRs in related district court litigation as per Sand Revolution II IPR2019-01393.

Late last week, the parties to the U.S. Patent and Trademark Office (USPTO) Director Review of the Patent Trial and Appeal Board (PTAB) institution decisions in OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance, LLC v. VLSI Technology LLC, IPR2021-01229, filed their opening briefs. While OpenSky vehemently denied any abuse of the PTAB system, VLSI said the cases force the USPTO to answer the question “whether the Office should allow itself to be used to facilitate extortion.”

In a precedential decision issued earlier this month, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the Patent Trial and Appeal Board (PTAB) in an appeal by LSI Corporation and Avago Technologies U.S. Inc. (LSI) regarding the PTAB’s finding that LSI’s cited reference in an inter partes review (IPR) did not qualify as prior art. The CAFC said in part that U.S. Patent No. 5,731,768 (“Tsang”) was not “by another” under 35 U.S.C. 102(e) for U.S. Patent No. 5,859,601 (‘601 patent).

Inventor Ramzi Khalil Maalouf yesterday filed an amicus brief suggesting that U.S. Patent and Trademark Office (UPSTO) Director Kathi Vidal change the language of Rule 37 CFR 42.12(a)(6)) to indicate that the Patent Trial and Appeal Board (PTAB) “shall” rather than “may” sanction abuse of the post grant process. The brief was filed in response to Vidal’s July request relating to OpenSky Industries, LLC v. VLSI Technology LLC, IPR2021-01064 and Patent Quality Assurance [PQA], LLC v. VLSI Technology LLC, IPR2021-01229, both of which have been the subject of much scrutiny by members of Congress and patent practitioners.

There were 33 Patent Trial and Appeal Board (PTAB) proceedings (all inter partes reviews [IPRs]), with just 42 new district court patent filings this week. That, coupled with 67 terminations, suggests that either it’s the summer doldrums, or the Western District of Texas/Waco reshuffling order is having an immediate impact on filings, as would-be plaintiffs reassess venue choices—at least in the short term. Of the terminations, a large chunk are IP Edge (per usual); the IPRs represent mostly defendants in litigation challenging claims asserted against them, with a few notable exceptions. In the district courts, a new Jeff Gross entity was the biggest filer, with some other activity highlighted below. One entity, Alidouble, appears to have ties with both Israeli and Hong Kong-based predecessors-in-interests, with Hong Kong-based Keystone Intellectual Property Management recorded.

This week saw 63 new patent filings in district court, and the typical (these days) 71 terminations, with 34 Patent Trial and Appeal Board (PTAB) filings (one post grant review and 33 inter partes reviews). I expect terminations will drop for a bit, as parties do what they can to hold on to venue before Judge Alan Albright in the wake of the Western District’s recent reassignment memorandum directing new filings to be randomly distributed (i.e., be put “on the wheel”) throughout the Western District. In major dismissals, WSOU either settled with or was scared off by always-tough Microsoft in that long-running campaign; the dozen or so dismissals of WSOU’s typical 13 parallel filings make up a chunk of the terminations. The Board filings were dominated by tech-versus-long-running-NPE suits, with a few competitor-competitor challenges (e.g., Vivint v. ADT).

The House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet today held Part II in a series of hearings to consider reforms to the Patent Trial and Appeal Board (PTAB) 10 years after it was created by the America Invents Act (AIA). The hearing, titled “The Patent Trial and Appeal Board After 10 Years, Part II: Implications of Adjudicating in an Agency Setting,” coincided with the release of a preliminary report by the U.S. Government Accountability Office (GAO) that was commissioned in June of last year by IP Subcommittee Chair Hank Johnson (D-GA) and Ranking Member Darrell Issa (R-CA) to investigate PTAB decision-making practices. The GAO’s preliminary findings revealed that “the majority of [administrative patent] judges (75 percent) surveyed by GAO responded that the oversight practiced by U.S. Patent and Trademark Office (USPTO) directors and PTAB management has affected their independence, with nearly a quarter citing a large effect on independence.”

The U.S. Patent and Trademark Office (USPTO) yesterday announced and today published an official Request for Comments on the interim process for Director Review of Patent Trial and Appeal Board (PTAB) decisions, the Precedential Opinion Panel (POP) process and the interim process for PTAB decision circulation and internal PTAB review. USPTO Director Kathi Vidal released updated interim guidance on Director Review and PTAB decision circulation/internal review soon after taking office in April and has been accepting preliminary feedback via a dedicated email address, but the comments received in response to this request will officially  inform upcoming notice-and-comment rulemaking to formalize these processes, as well as any modifications to the interim processes prior to formalization. Comments are due by September 19, 2022.

Recently, we submitted comments for the record to the Senate Judiciary Committee’s IP Subcommittee in response to its June 22 hearing on the Patent Trial and Appeal Board (PTAB), titled: “The Patent Trial and Appeal Board: Examining Proposals to Address Predictability, Certainty and Fairness.” The hearing focused on Senator Leahy’s PTAB Reform Act, which among other changes, would eliminate the discretion of the Director to deny institution of an inter partes review (IPR) petition based on an earlier filed district court litigation involving the same patents, parties and issues. Here is the net of what we told them:

On July 6, the U.S. Court of Appeals for the Fifth Circuit heard oral arguments in US Inventor v. Hirshfeld, an appeal from a lawsuit first filed in February 2021 to challenge the U.S. Patent and Trademark Office’s (USPTO’s) development of the Fintiv framework for discretionary denials of petitions for Patent Trial and Appeal Board (PTAB) proceedings. Although the appeal comes to the Fifth Circuit following the district court’s dismissal due to the plaintiffs’ lack of Article III standing, much of the oral arguments focused on whether the Fifth Circuit or the U.S. Court of Appeals for the Federal Circuit had proper jurisdiction to hear the appeal.