Posts Tagged: "PTAB"

The Conundrum Concerning Perceived Partiality and Financial Incentives in the AIA Review Process

There is a surge of protests in the air and increased cries of “structural bias” concerning the Patent Trial and Appeal Board’s (PTAB’s) granting of patent reviews, fueled by the July report issued by the U.S. Government and Accountability Office (GAO) revealing that 75% of surveyed PTAB judges said that control by office directors and Board management affected their autonomy.

Vidal Bans OpenSky from Active Role in VLSI IPR in Precedential Director Review Decision

In a much-anticipated decision, U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today issued a precedential Director review ruling holding that inter partes review (IPR) petitioner OpenSky Industries, LLC abused the IPR process in its conduct with patent owner, Technology LLC, and sanctioning OpenSky by excluding it from the IPR proceedings and “temporarily elevating Intel to the lead petitioner.” Vidal’s 52-page decision further remands the case to the Patent Trial and Appeal Board (PTAB) to decide whether it merits institution “based only on the record before the Board prior to institution.” The decision explains that “OpenSky, through its counsel, abused the IPR process by filing this IPR in an attempt to extract payment from VLSI and joined Petitioner Intel, and expressed a willingness to abuse the process in order to extract the payment.”

Patent Filings Roundup: Beer Bong Companies Clash; Crypto Company Sues Coinbase; Campaigns Spiral in Otherwise Quiet Week

District court and Patent Trial and Appeal Board (PTAB) filings were both down substantially this week, with 57 and 15, respectively, and 91 district court terminations. The drop-off of patent filings in the Western District of Texas has perhaps not been as pronounced as might be expected, though obviously most of those cases are being assigned to other judges there, or continuations of defendants being added to suits already within the Waco court’s jurisdiction. The Traxcell campaign continued to spiral, with many new defendants added; ditto the Hilco capital-led Bell Semiconductor case, which added an even more diverse list of defendants to the already-long roster. Otherwise most suits this week, with the exception of a few highlighted below, are related to earlier-filed suits.

CAFC Affirms Merck’s Win at PTAB over Mylan Challenge to Diabetes Treatment Claims

In its third precedential patent opinion this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) earlier today upheld a Patent Trial and Appeal Board (PTAB) decision finding that Mylan Pharmaceuticals, Inc. failed to show that certain claims of Merck Sharp & Dohme Corp.’s patent for a Type 2 Diabetes treatment were anticipated or would have been obvious over the cited prior art. Judge Lourie authored the opinion.

CAFC Says PTAB Got it Wrong in Mixed Ruling on Food Slicer Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday issued a precedential decision, in part holding that the Patent Trial and Appeal Board (PTAB) violated the Administrative Procedure Act (APA) by failing to “fully and particularly set out the bases upon which it reached its decision” to render obvious certain claims of Provisur Technologies’ patent. The CAFC also said the Board erred in its analysis finding two of the claims not unpatentable. The opinion was authored by Judge Prost. The case relates to claims 1-14 of Provisur’s U.S. Patent No. 6,997,089 for “a method and system for ‘classifying slices or a portion cut from a food product according to an optical image of the slice,’” according to the CAFC opinion. The PTAB held that Weber, Inc. had proved unpatentable as obvious claims 1–10, 13, and 14 but not claims 11 or 12. Provisur appealed the unpatentability determinations and Weber cross-appealed the finding that claims 11 and 12 were not unpatentable.

Jump Rope Company Asks High Court to Weigh in on CAFC Approach to Collateral Estoppel for PTAB Invalidations

The inventor of a novel jump rope system (the Revolution Rope), Molly Metz, is petitioning the U.S. Supreme Court through her company, Jump Rope Systems, LLC, to seek clarification of the collateral estoppel doctrine as applied by the U.S. Court of Appeals for the Federal Circuit (CAFC) to bar a patent infringement suit in district court where the CAFC has affirmed a Patent Trial and Appeal Board (PTAB) finding of unpatentability. Jump Rope Systems is arguing that the CAFC’s decision in  XY, LLC v. Trans Ova Genetics, L.C. (2018) conflicts with the Supreme Court decisions in B&B Hardware, Inc. v. Hargis Indus., 575 U.S. 138 (2015); Medtronic, Inc. v. Mirowski Family Ventures, LLC, 571 U.S. 191 (2014); and Grogan v. Garner, 498 U.S. 279 (1991).

Patent Filings Roundup: Western District Waters Tested; IP Edge Runs from Disclosure in Delaware

Twenty-three inter partes reviews (IPRs) and no post grant reviews were filed this week; plaintiffs filed an average-ish 79 new district court filings, though many were associated with older campaigns. The Daedalus Prime subsidiary asserting Intel patents has filed suits against Samsung and TSMC; Volkswagen filed a number of IPRs against Fortress-backed Neo Wireless. There were, again, no discretionary denials at the Patent Trial and Appeal Board (PTAB), though certainly merits-based denials continue apace; many challenges against Magnetar entity Scramoge have been instituted; and Red Hat filed a declaratory judgment action for non-infringement against litigation-funded Valtrus [Centerbridge Capital, run by Key Patent Innovations] on patents not yet asserted in district court, just as Google began challenging a different set of patents asserted against just them.

Vidal Drills into Data on PTAB Use of Sanctions Since AIA in Response to Senators

In June of this year, United States Patent and Trademark Office (USPTO) Director Kathi Vidal replied to a late April request by Senators Thom Tillis (R-NC) and Mazie Hirono (D-HI) for answers to a number of questions surrounding abuse of the inter partes review (IPR) system, explaining that she was working on the problem. Now, Vidal has sent a follow-up letter providing more detail on two of the questions raised in the letter, specifically with respect to the USTPO’s authority to issue sanctions for bad faith petitions. In addition to providing statistics on the Patent Trial and Appeal Board’s use of sanctions since the America Invents Act (AIA) was passed, Vidal also said she plans to seek stakeholder input to explore further options for addressing misconduct.

District Court Grants Dismissal of Due Process Case Against Former USPTO Officials

A Tennessee district court judge on Monday granted a number of former U.S. Patent and Trademark Office (USPTO) officials’ motion to dismiss a case brought by Martin David Hoyle and B.E. Technology alleging violation of the plaintiffs’ constitutional right to due process under the Fifth Amendment. Hoyle filed the suit in the Western District of Tennessee’s Western Division in August 2021 against former USPTO Director Michelle Lee and a number of other former USPTO officials for allegedly depriving the plaintiffs “of their valuable property rights in quasi-judicial administrative proceedings before the USPTO’s Patent Trial and Appeal Board (‘PTAB’).” The complaint further claimed that PTAB proceedings have been “tainted by various improprieties and underhanded tactics, designed to stack the deck against [plaintiffs] and in favor of their far more powerful opponents.”

Federal Circuit: PTAB Denial of Motion to Terminate in Arthrex Remand Where SCOTUS Vacated CAFC is Proper

Following a remand on Appointments Clause issues under United States v. Arthrex, Inc., the U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed a Patent Trial and Appeal Board (PTAB) ruling finding all challenged claims of Polaris Innovations Limited’s patents unpatentable and denying Polaris’ motions to terminate. The decision is precedential and authored by Judge Stoll. Polaris’ U.S. Patent Nos. 6,532,505 and 7,405,993 are directed to computer memory. In May 2016, Polaris filed suit against NVIDIA Corporation for infringement of certain claims of the two patents. NVIDIA then filed inter partes review (IPR) petitions challenging some claims as invalid. A final written decision on the petition involving the ‘993 patent issued on December 19, 2018, finding all challenged claims unpatentable. A final written decision on the petition involving the ‘505 patent issued on December 4, 2018, likewise finding all challenged claims unpatentable.

CAFC Affirms District Court Analysis of Standard for Granting Patent Term Adjustment

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued a precedential decision affirming a Virginia district court’s grant of summary judgment for the U.S. Patent and Trademark Office (USPTO) with respect to SawStop Holding LLC’s challenge of the denial of patent term adjustment (PTA) for two of its patents. The CAFC agreed with the district court that PTA was not warranted because the claim at hand did not issue under a decision that reversed an adverse determination of patentability. Instead, “‘the claim remain[ed] under rejection after the Board decision’ and ‘the patent only issue[d] after further prosecution’ and amendment.”

Amici Cite Relevance of GAO Report, Empirical Data, to Back New Vision’s Claim that AIA Review Structure Violates Due Process

Inventor organization US Inventor (USI) and Ron Katznelson—the author of a widely cited study detailing the link between Patent Trial and Appeal Board (PTAB) judges’ decisions and their compensation—have filed separate amicus briefs supporting New Vision Gaming and Development, Inc. in its most recent appeal to the U.S. Court of Appeals for the Federal Circuit (CAFC). New Vision is arguing that America Invents Act (AIA) trials violate the Due Process Clause and that the recent Government Accountability Office (GAO) Report documenting how U.S. Patent and Trademark Office (USPTO) and PTAB management control influences Administrative Patent Judges’ (APJ) decision making bolsters its previous arguments and warrants a new appeal. While USI’s brief expands upon this argument, Katznelson’s provides both old and new data that he says proves a “structural bias” exists.

Panelists Highlight Increased Capital, Importance of Foreign Patents for U.S. Patent Monetization at IPWatchdog LIVE 2022

During day one of IPWatchdog LIVE in Dallas, Texas, a panel of speakers discussing current trends and the prospects of patent monetization going forward noted that the “heyday” of patent monetization was approximately ten years ago, with several large patent awards increasing interest in patent monetization. The panelists noted two major factors which presently act as a “glass ceiling” over patent valuations. First, the inter partes review (IPR) proceedings instituted at the U.S. Patent and Trademark Office (USPTO) in 2012 as part of the America Invents Act (AIA) has made investment in patents a riskier proposition.

New Vision Gaming Cites GAO Report to Bolster PTAB Bias Arguments

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.

Vidal in Latest Director Review: File Stipulations Early or Deal with Fintiv Denials

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.”