Posts Tagged: "PTAB"

There was a slight uptick in district court filings last week after a slow January and February, with 43 new patent filings, including a design patent battle involving tumblers and multiple filings indicating an association with high-volume plaintiffs such as Jeffrey Gross and Leigh Rothschild. It was a busy week at the Patent Trial and Appeal Board (PTAB), with over 32 new challenges last week, with only one procedural denial on an institution decision—but that was not based on discretionary denial, which remains often briefed but rarely successful for the time being. Of course, the big news this week was that the Federal Circuit has revived an Administrative Procedure Act (APA) challenge to the Fintiv decision on discretionary denial itself as arbitrary agency action that skirted proper procedure and had an outsized impact on a broad swath of cases.

On March 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Intel Corp. v. PACT XPP Schweiz AG reversing a final written decision of the Patent Trial and Appeal Board (PTAB) that found Intel had failed to show that PACT’s patent claims were invalid for obviousness. In reversing, the Federal Circuit ruled that the PTAB improperly rejected Intel’s “known technique” rationale supporting a motivation to combine prior art references under the flexible analysis set out by the U.S. Supreme Court’s landmark 2007 obviousness ruling in KSR v. Teleflex.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday said that Apple has standing to pursue its claim that the U.S. Patent and Trademark Office (USPTO) Director’s instructions to the Patent Trial and Appeal Board (PTAB) regarding discretionary denial practice under Apple Inc. v. Fintiv, Inc. were made without proper notice-and-comment rulemaking. The CAFC affirmed the district court’s ruling on two other challenges brought by Apple, Cisco, Intel and Edwards Lifesciences, but said that at least Apple had standing to present the challenge that the discretionary denial instructions were improperly issued and reversed on that ground. The appeal relates to Apple’s and the other companies’ challenge of the Fintiv instructions governing the PTAB’s discretion to deny institution of inter partes review (IPR) proceedings based on their contention that they will result in too many denials.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has been on a tear recently, reviewing sua sponte a number of Patent Trial and Appeal Board (PTAB) decisions and designating others precedential. Many of those decisions have helped to make America Invents Act (AIA) proceedings more rigorous and fair, such as the Director’s decisions correcting the PTAB for relying on conclusory expert statements and putting at least some teeth in the real parties in interest requirement. Her most recent interventions in Commscope Technologies v. Dali Wireless IPR2022-01242 and AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530 however, add more confusion than clarity to the Fintiv analysis, and more work for parties and the Board, without improving fairness or efficiency.

In a precedential decision published Monday, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB) decision to invalidate a pharmaceutical patent owned by the University of Minnesota. Gilead Sciences filed an inter partes review (IPR) in 2017 challenging the claims of the university’s  U.S. Patent 8,815,830 as unpatentable. The ‘830 patent covers chemical compounds that prevent the reproduction of viruses or the growth of cancerous tumors. The PTAB found that the University of Minnesota failed to provide a sufficient written description that supported the patent’s priority claim. The Board thus concluded that the patent would not guide a skilled artisan to the patent’s claims. The CAFC agreed with the PTAB’s decision and with the ruling that a 2010 patent application publication filed by Gilead was “prior art” over the university’s patent.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday granted Patent Quality Assurance’s (PQA’s) motion to dismiss its January 24 petition for a writ of mandamus asking the CAFC to restore it as a party to its high-profile inter partes review (IPR) proceeding against VLSI Technology. U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal in December 2022 ruled that PQA abused the IPR process by filing an IPR and threatening to join a separate IPR against VLSI in order to receive a payout from the technology firm. She also found that PQA misrepresented an “exclusive engagement” with a witness, Dr. Adit Singh, who was involved in another IPR petition against VLSI brought by OpenSky. She sanctioned PQA by dismissing it from the proceeding and said that, “though the behavior here may not be as egregious as that of OpenSky… I find that PQA’s behavior, nonetheless, amounts to an abuse of process.”

The United States Court of Appeals for the Federal Circuit (CAFC) ruled on March 1 that the Patent Trial and Appeal Board (PTAB) erred in its analysis of an inter partes review (IPR) filed by streaming giants Netflix and Hulu. The CAFC vacated and remanded the case, ordering the PTAB to once again review the patent dispute filed against DivX. “Because the Board legally erred in its obviousness analysis, and the error cannot be regarded as harmless, we vacate and remand,” wrote the CAFC judges in their ruling. Netflix and Hulu petitioned the PTAB to carry out an IPR in February 2020 of DivX’s U.S. Patent No. 10,225,588. The petition claimed the ‘588 patent was unpatentable due to obviousness.

Patent filings continue to be slightly depressed in the district courts and at the Patent Trial and Appeal Board (PTAB) compared to the highs of last year, with 17 new PTAB cases and 38 new district court filings. New filings consist primarily of a few apparently funded cases—a Fortress entity, for instance, sued Amazon, and a Taiwanese entity with no Internet presence has sued Apple and Samsung on wireless charging patents, with some new Jeff Gross entity filings, a slew of Dynapass filings, and some other banking campaigns picking up steam; at the Board, most of the fillings revolved around existing campaigns Robocast and Daedalus Prime, as detailed below. Ericsson continued with challenging some Phillips patents; and there’s even a funder, Element Capital, who has been hit by inter partes reviews (IPRs) after suing in their own name (via a Singapore subsidiary, against Chinese subsidiaries of other companies, including Motorola).

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today issued a second Director Review decision correcting the Patent Trial and Appeal Board (PTAB) on its approach to the “compelling merits” analysis outlined in her June 2022 Guidance Memo. In AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530, Vidal vacated the PTAB’s denial of AviaGames’ petition to institute IPR of certain claims of Skillz’s U.S. Patent 9,479,602 B1. She explained that the Board’s determination to deny the petition following a Fintiv analysis was improperly based on the district court’s judgment of invalidity under 35 U.S.C. § 101, since that is “a statutory ground that could not have been raised before the Board” and “does not raise concerns of inefficient duplication of efforts or potentially inconsistent results between the Board and the district court.”

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal yesterday issued a precedential Director Review decision clarifying that her June 2022 “compelling merits” memo was not meant to replace the Patent Trial and Appeal Board’s (PTAB’s) analysis under Apple Inc. v. Fintiv, Inc. In IPR2022-01242, the PTAB instituted inter partes review (IPR) without exercising its discretion under 35 U.S.C. § 314(a), citing Vidal’s “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” In that memo, Vidal said that the PTAB “will not deny institution of an IPR or PGR under Fintiv (i) when a petition presents compelling evidence of unpatentability; (ii) when a request for denial under Fintiv is based on a parallel ITC proceeding; or (iii) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as in the petition or any grounds that could have reasonably been raised in the petition.”

I attended the hearing at the U.S. Court of Appeals for the Federal Circuit (CAFC) in Maalouf v. Microsoft on Monday February 6, 2023, and the CAFC issued its opinion in the case this past Thursday. This case has curious origins. Through his company Dareltech, Ramzi Khalil Maalouf, a Lebanese immigrant and U.S. citizen, sued Xiaomi, a Chinese multinational corporation, for patent infringement in New York. The case was dismissed without prejudice because Xiaomi was found not to have a physical presence in New York, notwithstanding their proven secret office.  Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.

Patent owners think Inter Partes Reviews (IPRs) are a fixed game. Their concern goes beyond structural and procedural aspects of the IPR process; patent owners also believe that Patent Trial and Appeal Board (PTAB) judges are hostile to patents. Their concerns are particularly pronounced because their opportunities for appellate review of those PTAB judges’ decisions is limited. This article examines whether this concern is justified.

Does Patent Quality Assurance (PQA) have a relationship with Intel? That is fast becoming the question du jour relating to the saga over the VLSI patents, to which Intel is on the hook for over $2 billion after losing a patent infringement action in district court. The factual predicate for the belief that there may be some relationship between PQA and Intel stems from the filing of an inter partes review (IPR) challenge on the part of PQA against the VLSI patents responsible for the $2 billion verdict against Intel. There has been a question in whispers behind the scenes about whether and to what extent the PQA challenge to the VLSI patents is a subterfuge because Intel could not challenge the patents in an IPR itself.

The copy writes itself: “Five-Time Woman World Jump Rope Champion Transforms Fitness Industry after Securing Patents.”  However, you’re unlikely to find a glowing profile of Molly Metz on the U.S. Patent and Trademark Office (USPTO) website anytime soon. That’s because, after the fitness industry embraced Molly’s invention as the gold standard for speed jump ropes, the Patent Trial and Appeal Board (PTAB) of the USPTO invalidated the claims of the patents based on prior art from 1978 and 1979.