Posts Tagged: "PTAB"

‘Shenanigans’ Gone ‘Off the Rails’: PQA Asks CAFC to Step in on Vidal Director Review Sanctions

Following United States Patent and Trademark Office (USPTO) Director Kathi Vidal’s December 2022 precedential decision that Patent Quality Assurance (PQA) abused the inter partes review (IPR) process in its case against VLSI Technology, PQA has filed a petition seeking mandamus relief in the matter with the U.S. Court of Appeals for the Federal Circuit (CAFC). Vidal ruled in December 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. Vidal also found that PQA misrepresented an “exclusive engagement” with a witness, Dr. Adit Singh, who was involved in another IPR petition against VLSI from OpenSky. She wrote in the decision dismissing PQA from the IPR 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.”

Darrell Issa Doesn’t Understand That He is the Problem

US Inventor is publicly opposing the appointment of Representative Darrell Issa (R – CA) to Chair the IP Subcommittee due to Issa’s record of IP reforms that are harmful to independent inventors and startups. To accomplish these IP reforms, Issa squelches the voices of independent inventors and startups while amplifying the voices of Big Tech and Chinese Communist Party (CCP) controlled multinationals. Now, in a recent statement, Issa argues that his IP reforms have made the patent system more fair for everyone, even as the facts show he is completely wrong. Issa is unfit to be IP Subcommittee Chair.

New Vision Gaming Tells CAFC Final GAO Findings Warrant Dismissal of CBM Institution

Earlier this month, patent owner and casino game innovator New Vision Gaming & Development filed a reply brief in the U.S. Court of Appeals for the Federal Circuit in its latest bid to challenge the Patent Trial and Appeal Board’s (PTAB) institution of covered business method (CBM) review proceedings brought by gambling product company SG Gaming. New  Vision alleged violation of a forum selection clause in an agreement between the two parties and now also points to a final report of the U.S. Government Accountability Office (GAO) as further support for dismissal. New Vision’s most recent brief comes nearly two months after appellee SG Gaming and intervenor USPTO Director Kathi Vidal both filed briefs in the Federal Circuit backing the PTAB’s institution of CBM review proceedings.

High Court Asks for SG Views on Apple’s Petition Challenging Federal Circuit Approach to IPR Estoppel

The U.S. Supreme Court yesterday invited the U.S. Solicitor General to provide its views on Apple’s petition asking the High Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings. The case stems from a February, 2022, decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the court issued a mixed precedential decision that affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California. That ruling related to a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc.

Salesforce’s Abusive Post Grant Tactics Demonstrate USPTO Dysfunction

The issue of who is the real party in interest in an inter partes review (IPR) filed at the Patent Trial and Appeal Board (PTAB) is a particularly thorny matter. When IPRs were introduced, patent owners were assured that there would be a meaningful estoppel provision, which would prevent those who lost IPRs from challenging the same patents in later proceedings. There was also a statute of limitations, another thorny matter, that would prevent challengers from filing an IPR more than one year after they were sued. The long and short of it is this—real party in interest law and statute of limitations law, which apply in every other legal setting, are interpreted vastly differently at the PTAB. For example, with the statute of limitations, if you are barred from bringing a challenge and someone else brings a challenge, then suddenly you are able to join the challenge, despite being barred. But wait—there is more. If that first party that was not barred settles and leaves the case and the barred party is the only challenger remaining, well the case must go on. A legal absurdity.

PTAB Judge Who Owns Cisco Stock Withdraws from IPR Following Centripetal Claims of Bias

Following a Motion for Recusal and Vacatur filed on December 30 by Centripetal Networks, Inc., a Patent Trial and Appeal Board (PTAB) judge has now withdrawn from an inter partes review (IPR) proceeding in a stated effort to “reduce the number of issues and simplify the briefing.” Centripetal filed the December 30 Motion in an IPR brought against it in November 2021 by Palo Alto Networks, which Cisco Systems, Inc. successfully petitioned to join. The Motion argued that Administrative Patent Judge (APJ) Brian McNamara created at least the appearance of actual bias in failing to provide “notice, divestiture, or any apparent attempt to recuse” himself from proceedings involving Cisco despite owning Cisco stock and being “paid a significant amount of money (apparently a share of the profits) from one of Cisco’s lobbyist law firms,” according to the Motion.

Apple v. Zipit Designated Precedential Following Busy December for USPTO

The United States Patent and Trademark Office (USPTO) stayed active over the holiday period with several big announcements, and today Director Kathi Vidal continued that trend by designating as precedential the December 21 decision in Apple v. Zipit Wireless. Also in December, the United States Government Accountability Office (GAO) released its full report on the Patent Trial and Appeal Board (PTAB), recommending, among other suggestions, that the Office make public any policies and directives to judges that could impact substantive decision-making.

RALIA Is Economic Suicide: A Reply to the Critics

Paul Morinville, Founder of US Inventor, recently published a response to my column criticizing RALIA, a bill in Congress that would abolish the Patent Trial and Appeal Board (PTAB). I offer a few observations in reply. I argued in “The Made in China Act,” November 16, 2022, that juries are not an effective or reliable check on patent validity and that eliminating contested validity reviews at the United States Patent and Trademark Office (USPTO) would be a disaster for U.S. manufacturing. As if determined to prove my point, the VLSI patent-assertion group recently obtained yet another monster infringement verdict against Intel based on a patent that probably shouldn’t have issued.

PTAB Year in Review: Five Developments from 2022 that Shaped the Future of the Board

Another year down, and another year of interesting developments as the Patent Trial and Appeal Board (PTAB) continued its reign as the most significant patent court in the country. Last year ended with a growing sense that change was on the horizon with President Biden’s nomination of Director Kathi Vidal. And that change did arrive as Director Vidal was confirmed in April and quickly worked to reform PTAB policies. Let’s take a look at the five most significant developments involving the PTAB this year.

USPTO Guidance Reduces PTAB Discretionary Denials, Signaling Potential Uptick of IPRs in 2023

The appointment of USPTO Director Kathi Vidal in April 2022 and her introduction of interim guidance in June 2022 has spurred changes at the Patent Trial and Appeal Board (PTAB) that may result in an increase in instituted inter partes reviews (IPRs) due to a dramatic decline in discretionary denials. Under the reign of former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, the number of discretionary denials of IPR petitions had steadily increased over the last five years, in part due to the application of the PTAB’s 2020 precedential decision in Apple Inc. v. Fintiv, Inc.

Webinar Panelists Say Vidal Should Have ‘Thrown a Thunderbolt’ at OpenSky Case

During an IPWatchdog-hosted webinar held today, panelists reflected on the impact that U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has had on the Patent Trial and Appeal Board (PTAB) so far and called her handling of the VLSI v. OpenSky case a “giant missed opportunity” to create a roadmap for how the Office will handle bad faith behavior.

Patent Owner Scores Partial Win Against Google at CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision partially reversing and partially affirming a Patent Trial and Appeal Board (PTAB) decision that had found Google failed to prove certain claims of Hammond Development International’s U.S. Patent No. 10,270,816 unpatentable. Hammond’s patent covers “a communication system that allows a communication device to remotely execute one or more applications.”

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.