It was an average week all around with 31 new patent filings at the Patent Trial and Appeal Board (PTAB) – all inter partes reviews (IPRs) – and 67 new filings in district court. The bulk of this week’s new PTAB filings (a total of 19) were petitions challenging patents owned and asserted by Entropic Communications LLC [associated with SoftBank Group Corp.] (discussed further below). Other notable filings include petitions challenging patents held by Softex [associated with SoftBank Group Corp.], Dental Imaging Technologies [associated with Envista Holdings Corporation], Resonant Systems [d/b/a RevelHMI], Immersion Corp, and Dsm IP Assets BV [associated with DSM-Firmenich AG].
The U.S. Patent and Trademark Office (USPTO) issued a Notice of Proposed Rulemaking (NPRM) today that would allow practitioners who are not registered with the USPTO patent bar to act as lead counsel in proceedings before the Patent Trial and Appeal Board (PTAB). The Office has decided to propose that practitioners must still be represented by a registered practitioner, but to allow parties to “designate a non-registered practitioner as lead counsel and the registered practitioner as back-up counsel.”
The Patent Trial and Appeal Board (PTAB) remains a popular and busy venue for post-grant review of patents. These proceedings are known for being faster, and by statute, they allow for less discovery than district court patent cases. PTAB litigants therefore may not think about potential third-party subpoenas, which can take significant time and effort to obtain. It is possible, however, to obtain a subpoena in a PTAB case. In certain circumstances, a PTAB subpoena can be a useful tool to bolster your case at the PTAB, but there are specific procedures that must be followed to properly issue and enforce such a subpoena. Precise compliance with these procedures is necessary to obtain the discovery sought.
It was an average week for patent filings at the Patent Trial and Appeal Board (PTAB) and an above-average week in district courts, with 72 district court complaints filed and 18 new PTAB petitions—one petition for Post Grant Review (PGR), and 17 for Inter Partes Review (IPR). At the PTAB, a number of challenges were filed, including two IPRs by Tesla challenging patents owned by Iqar Inc, four IPRs by Dish challenging patents owned by Entropic Communications LLC (associated with Fortress), two IPRs by Microsoft challenging patents owned by Interdigital Patent Holdings Inc (associated with InterDigital Inc.), and two IPRs by Juniper Networks challenging patents owned by Monarch Networking Solutions LLC (associated with Acacia Research Corporation).
On February 8, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Weber, Inc. v. Provisur Technologies, Inc. that vacated rulings by the Patent Trial and Appeal Board (PTAB) nixing validity challenges by American grill maker Weber against Provisur’s commercial food slicer patent claims. The Federal Circuit reversed the PTAB on claim construction and also found that the Board misapplied CAFC precedent on the level of public dissemination required before printed publications can qualify as prior art.
It was a busy week at the Patent Trial and Appeal Board (PTAB) with 40 new filings—all inter partes review (IPR)—and an average week in the district courts with 51 new filings. The bulk of new PTAB filings can be attributed to a few petitioners challenging multiple patents held by one patent owner (and all asserted in parallel district court litigations). For example, Apple continued its filings against Carbyne Biometrics LLC [associated with Bjorn Markus Jakobsson] patents, adding another five petitions against four patents to the two filed earlier this month
The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision vacating and remanding a Patent Trial and Appeal Board (PTAB) decision that a patent for a climate control system was not proven unpatentable by Google LLC and Ecobee, Inc. In so doing, the court clarified how to determine when a court or the PTAB has implicitly construed a claim.
U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal has released a guidance memorandum for the Trademark and Patent Trial and Appeal Boards (TTAB and PTAB) on the misuse of artificial intelligence (AI) tools before the Boards that largely clarifies the application of existing rules to AI submissions. The announcement is a precursor to a coming Federal Register Notice that will provide additional guidance on the use of AI tools for the public and other USPTO departments. The guidance document suggests that part of its impetus was Supreme Court Chief Justice John Roberts’ recent year-end report, which acknowledged both the benefits and dangers of AI in the context of the legal profession.
It was an average week for patent filings at the Patent Trial and Appeal Board (PTAB) and a slightly above-average week in district courts, with 62 district court complaints filed and 21 new PTAB petitions—one petition for Post Grant Review (PGR), and 20 for Inter Partes Review (IPR). The PTAB instituted 13 cases; iInstitution was denied in 12 cases and 15 cases settled. In district courts, 62 new cases were filed and 12 cases were terminated.
In a recent brief to the Patent Trial and Appeal Board (PTAB), Pfizer and BioNTech (Pfizer) told PTAB judges that Moderna’s dismissal of prior art listed in Pfizer’s August 2023 petition for inter partes review (IPR) of Moderna’s patent on mRNA vaccine technology is inconsistent with its declarations to the Food and Drug Administration (FDA) during the drug approval process. According to the brief, when Moderna was seeking approval for its COVID-19 vaccines, the company “candidly represented to the FDA that prior studies for related vaccines…supported an expectation of safety and efficacy. But now, faced with invalidating vaccine prior art…Moderna wrongly casts the same vaccine prior art as irrelevant.” The brief referred to this as a “litigation-driven one-eighty.”
Speakers at IPWatchdog’s PTAB Masters 2024 program this week predicted there will be little movement on the U.S. Patent and Trademark Office’s (USPTO) Advance Notice of Proposed Rulemaking anytime soon, but some pinned their hopes for change at the Patent Trial and Appeal Board (PTAB) to the pending Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act. Both panelists who typically represent petitioners and those who represent patent owners at the PTAB also agreed there are a number of ways the perception of the Board could be improved. These could include changes like allowing oral argument more often, allowing experts to testify in person, and a more meaningful rehearing procedure, for example.
Last week, biopharmaceutical company Liquidia Technologies filed a petition for writ of certiorari with the U.S. Supreme Court to appeal a Federal Circuit ruling that affirmed induced infringement findings against Liquidia following the patent at issue being invalidated at the Patent Trial and Appeal Board (PTAB). In the petition, Liquidia argues that two previous Supreme Court rulings lead to a result contrary to the Federal Circuit’s determination that the invalidation of patent claims at the PTAB do not have preclusive effect on infringement litigation pending an appeal of the PTAB’s decision.
Filings began picking up again this week after a slow start in the new year in both the Patent Trial and Appeal Board (PTAB) and district courts. The PTAB had a busy week with 31 new filings—one Post Grant Review (PGR) and the rest Inter Partes Reviews (IPRs). Nearly half of all new PTAB filings came from just two entities: Apple and Neurent Medical…. The PTAB was also busy issuing 27 institution decisions (21 instituted and 6 not instituted).
U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal on Monday made public an order from December awarding VLSI Technology LLC $413,264.15 for “time spent addressing OpenSky’s abusive behavior” in a years-long and circuitous case between the two companies. Vidal first issued her precedential Director review ruling in October 2022, holding that inter partes review (IPR) petitioner OpenSky Industries, LLC abused the IPR process in its conduct with patent owner, VLSI Technology LLC, and sanctioning OpenSky by excluding it from the IPR proceedings by relegating it to be a “silent understudy” in the proceedings and “temporarily elevating Intel to the lead petitioner.”
Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in CyWee Group Ltd. v. ZTE (USA), Inc. affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of CyWee’s 3D pointing device patent claims. In affirming the final written decision, the appellate court found that ZTE’s lack of adversarial nature in inter partes review (IPR) proceedings allowed LG Electronics, a joined party that was otherwise time-barred, to properly oppose CyWee’s motion to amend patent claims.