Posts Tagged: "PTAB"

Answering the Question, ‘What is the Conservative View of Patent Rights?’

Joe Matal, the former Acting Director of the U.S. Patent and Trademark Office (USPTO), recently posed as a question to those sponsoring H.R. 5874, the Restoring America’s Leadership in Innovation Act (RALIA): “What is the ‘conservative’ position on patents and other intellectual property?” It is an interesting question. What is it about property that makes it property? That’s not a liberal or conservative, or a Democratic or Republican question. Property rights are something everyone learns about early in life when your older sibling grabs your teddy bear and takes it away from you. Property rights are innate in humans. Just about everyone would proffer a similar definition: that’s mine and you can’t take it away – at least not without a fight.

CAFC Says Burden of Reexamination Following Denied IPR Does Not Warrant Mandamus Relief

The U.S. Court of Appeals for the Federal Circuit (CAFC) last week denied a petition requesting mandamus relief to vacate the U.S. Patent and Trademark Office’s (USPTO’s) grant of a request for ex parte reexamination of Sound View Innovations’ U.S. Patent No. 6,708,213 by DISH Network LLC. The ‘213 patent covers a “Method for Streaming Multimedia Information Over Public Networks.” DISH originally petitioned the USPTO for inter partes review (IPR) of claim 16 of the ‘213 patent on the ground that it was anticipated and/or obvious based on two prior art references called Sen and Geagen.

OpenSky: ‘There Was No Harm’ Stemming From Offer to Manipulate VLSI Proceedings

On November 17, patent owner VLSI Technology and petitioner OpenSky Industries each filed briefs at the U.S. Patent and Trademark Office (USPTO) in response to Director Kathi Vidal’s order for OpenSky to show cause as to why it should not be required to pay attorney’s fees to compensate for its abuse of inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB). While VLSI argues that OpenSky should be ordered to compensate all attorney’s fees and costs incurred from each IPR petition encouraged by OpenSky’s own petition filing activities, OpenSky argues that Director Vidal’s order to show cause fails to identify any compensable harm stemming from OpenSky’s IPR conduct.

Patent Filings Roundup: IP Edge Hearings in Delaware Launch Fireworks; Qualcomm Claims Confirmed Unpatentable in AAPA Decision on Remand

It was a light week for patent filings, with 18 Patent Trial and Appeal Board (PTAB) and 38 district court complaints; last week saw the first Fintiv denials in months in a tranche of cases very close to trial; this week there were five more discretionary denials under Section 325(d), where the parties failed to point out any material error in earlier proceedings analyzing similar art under Advanced Bionics. And obviously, the third Fortress/VLSi trial resulting in another near-billion-dollar award splashed the headlines. The District of Delaware was busy uncovering the story behind IP Edge/Mavexar LLC and how they run and control their subsidiaries, and it’s even more interesting than I thought it was; though of course, it hasn’t stopped entities like those run by Jeffrey Gross from continuing to roll out filings. More below.

CAFC Expressly States Patentee Disclaimers During IPR are Not Binding on the PTAB’s Patentability Analysis

Earlier today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in CUPP Computing AS v. Trend Micro Inc. affirming final written decisions from a trio of inter partes review (IPR) proceedings invalidating CUPP Computing’s patent claims covering methods for performing security operations on a mobile device. The CAFC’s decision makes clear to patent owners defending their rights at the Patent Trial and Appeal Board (PTAB) that the Board is not required to consider a disclaimer entered during IPR as binding on the proceedings before it.

Partial Win for VLSI Against Intel as CAFC Reverses PTAB on One Claim of Integrated Circuit Patent

In a precedential opinion issued yesterday, the U.S. Court of Appeals for the Federal Circuit (CAFC) ruled partially in favor of VLSI Technology, Inc. in its case with Intel, reversing the Patent Trial and Appeal Board’s (PTAB’s) holding that one claim of U.S. Patent No. 7,247,552 was unpatentable. The court upheld the PTAB’s unpatentability findings on the three other challenged claims. Intel filed three separate inter partes review (IPR) petitions against VLSI challenging the validity of claims 1, 2, 11, and 20 of the ‘552 patent, which is directed to “’[a] technique for alleviating the problems of defects caused by stress applied to bond pads’ of an integrated circuit.”

Disruptive Startups Cannot Survive in a Post-AIA Patent Landscape

I founded Netlist in Irvine, California, over 20 years ago to develop the most sophisticated memory module technology in the world. We succeeded, shipping over a billion dollars of product and partnering with top companies, such as IBM, HP and Dell, to power their high performance computers. Netlist continues to invest heavily in R&D in the U.S. We hold more than 130 patents, many of which have been designated as standards-essential. Our memory technology has benefited consumers, businesses and the U.S. military as it is now an integral part of advanced computers deployed in a variety of industries. When we began the company, we were under the impression that securing a U.S. patent was the high-water mark of innovation and that this would protect our inventions against infringement. A patent, we believed, would allow small innovators like Netlist to compete with large incumbents that wield enormous market power.

Federal Circuit Affirms PTAB’s Mixed Decision on Air Mattress Patents

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming the Patent Trial and Appeal Board (PTAB) on two mixed inter partes review (IPR) decisions involving American National Manufacturing and Sleep Number Corp. that found some, but not all, of the challenged claims not unpatentable. The IPRs on appeal involve U.S. Patent Nos. 8,769,747 and 9,737,154. They “describe systems and methods that purport to adjust the pressure in an air mattress ‘in less time and with greater accuracy’ than previously known.” American National filed IPR petitions challenging many claims of both patents and asserting that most of the challenged claims would have been obvious over various prior art references.

Patent Filings Roundup: Old IP Edge Filings Explode; No New Discretionary Denials Again; Fortress-Backed DivX Rolls On

It was a return to form this week in the district courts, with 115 new patent filings (led by more than 40 new IP Edge complaints) to just 23 new Patent Trial and Appeal Board (PTAB) filings—the latter number being bolstered by a number of challenges to patents held by Raymond Anthony Joao subsidiary Beteiro, LLC by a conglomerate of gambling companies, including PointsBet USA, DraftKings, Inc., BetMGM, LLC, Hillside New Jersey LLC, and Entain Corporate Services Ltd. Micron filed another set of challenges against Katana Silicon Technologies patents, Ecobee challenged another Magnetar entity, Ollnova, which has brought suit on Internet of Things (IoT) related devices; and it was another week without any discretionary denials.

Amici Back Jump Rope Company in Supreme Court Case

Three amici filed briefs last week in Jump Rope System’s petition asking the U.S. Supreme Court to review a U.S. Court of Appeals for the Federal Circuit (CAFC) decision upholding a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Eagle Forum Education and Legal Defense Fund and the Fair Inventing Fund filed briefs in support of the jump rope company while DivX filed in support of neither party .

Jump Rope Systems, the inventor of a novel jump rope system, is petitioning the Supreme Court to clarify “whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”

Discretionary Denial Under Section 325(d): Nuances of Advanced Bionics Framework for Prior Art Cited in an IDS During Prosecution

The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of an inter partes review (IPR) proceeding under 35 U.S.C. § 325(d) if “the same or substantially the same prior art or arguments previously were presented to the Office.” In Advanced Bionics, LLC v. Med-El Elektromedizinische Geräte GmbH (“Advanced Bionics”), the PTAB established a two-part framework for determining whether a PTAB panel should exercise discretion under Section 325(d). This article surveys recent PTAB decisions having the common fact that the IPR challenges rely upon prior art that is the same or substantially the same as prior art submitted in an IDS during prosecution to glean insights as to how parties and the Board are addressing Advanced Bionics in this scenario.

Patent Filings Roundup: Another Slow Week in the Courts; Discretionary Denials Drop to Near-Zero in Q3

It was another surprisingly light week in patent filings, compared at least with recent memory—just 29 new suits and 17 new filings at the Patent Trial and Appeal Board (PTAB), all inter partes reviews (IPRs). The filings include a few challenges against patents asserted by the Fortress-funded Neo Wireless and Netlist, as well as a slew of filings by Apple against Mullin Industries, LLC. After a week’s respite there were five new IP Edge suits—not as many as usual, but still enough to represent almost a fifth of all suits filed this week.

PTAB Reverses Course in Code200 IPR Under Director’s ‘Compelling Evidence’ Memo

Last week, the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) decided to institute inter partes review (IPR) in Code200, UAB v. Bright Data, Ltd., IPR2022-00861, following a sua sponte Director Review decision ordering the Board to reconsider its original ruling denying institution. USPTO Director Kathi Vidal issued a precedential sua sponte Director Review Decision in the case in August, clarifying the application of Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) when denying decisions to institute IPRs.

Eligibility Comments to USPTO Suggest Alice/Mayo Framework Changes, While PTAB Practices RFC Sees Copy-Paste Campaign

The U.S. Patent and Trademark Office (USPTO) is currently assessing comments collected pursuant to a pair of requests for public input, one focused on the agency’s subject matter eligibility guidelines for examining patent applications for 35 U.S.C. § 101 issues, and the other seeking feedback on several practices surrounding patent validity trials at the Patent Trial and Appeal Board (PTAB). While the PTAB practices request for comments appears to have spawned a copy-and-paste comment campaign involving thousands of boilerplate comments, about two-dozen comments filed on the Section 101 guidelines featured far more sophisticated views on actions that the USPTO should be taking to improve patent examination practices on patent applications that trigger issues with judicial exceptions to Section 101 eligibility under U.S. Supreme Court case law.

Patent Filings Roundup: Light Week in District Court Buoyed by IV-Selloff Assertions; Vidal Grants Second Sua Sponte Review of Second Institution in OpenSky/VLSI Case

This week saw 26 Patent Trial and Appeal Board (PTAB) filings (all inter partes reviews [IPRs]) and just 28 new district court complaints—and notably and unusually, no new IP Edge filings. Most of the filings were related to three entities, the now-sprawling Bell Semiconductor campaign added a slew of new defendants, and Cedar Lane and Buffalo Patents, both campaigns comprised entirely of old Intellectual Ventures (IV) patents (both almost certainly transferred under IV’s late-stage low-cost time-limited backend deal structure). There was one (non-Fintiv) denial at the Board and a few IV patents were challenged directly by Honda; some pharmaceutical challenges were filed, but otherwise, it was a relatively quiet week in new filings, particularly in the district court (it’s the first week in as long as I can remember when there didn’t appear to be a single IP Edge filing, which certainly contributes to the lull).