Five Developments from 2022 that Shaped the Future of the Board

It was also a year of interesting developments as the Patent Trial Board (PTAB) maintained its position as the most important patent court in the country. Last year, President Biden’s appointment of Secretary Kathy Vidal reinforced the sense that change was imminent. And in April, when Secretary Vidal was confirmed, he immediately worked to reform the PTAB’s policy, so that change did happen. Let’s take a look at his five most significant developments on the PTAB this year.

1. Director Vidal Confirmation and Rapid Focus dummy denial.

On April 5, 2022, the Senate confirmed Vidal as director, filling the void left by Andrei Iancu’s resignation and debate over whether acting director Drew Hirschfeld has the authority to control oversight reviews. Secretary Vidal quickly set to work issuing guidance on a variety of topics, including the often-discussed use of discretionary denial under parallel proceedings. The Director’s memorandum of June 21, 2022, “District Court Litigation Parallel to Interim Discretionary Denial in AIA Post-Grant Proceedings,” inter alia West Texas and the International Trade Commission (ITC) — inter partes It serves as a basis for rejecting a review (IPR) petition. The intention seems to have worked. dummydenials based on have decreased since then.

Secretary Vidal’s memorandum contained four key provisions:

1. a) The ITC procedure shall: dummy The ITC-focused clause was particularly influential. This is because the ITC proceedings, for the most part, favored the patent owner. dummy cause.
2. b) a Sotera All provisions other than warranty dummy and Sotera The petition provides that if an IPR is commenced, claims brought or reasonably could have been brought in the PTAB will not be brought in district court (i.e., §315(e)( 2) I agree with the plain language). Such a provision should be of little burden to petitioners and is a step towards doing so. dummy Denial is officially becoming a thing of the past.
3. c) The PTAB does not exercise its discretion to reject petitions that present unpatentable “persuasive evidence.” While this method sounds good in theory, it can create additional uncertainty. The director’s memorandum states:[c]A persuasive and meritorious challenge is one in which, unless the evidence is rebutted in court, the preponderance of evidence clearly leads to the conclusion that one or more claims are unpatentable. ” It is unclear how this will actually differ. A priori It would have seemed unwise for the PTAB to file a petition without evidence that, if not rebutted, would lead to a finding of unpatentability. This criterion also provides further evidence of confirmation bias if the same PTAB panel that issues the final written decision has already decided that the challenge is “compelling” and “worthy.” Invite suggestions.
4. d) The trial period is no longer based on a scheduling order that sets trial dates. The Director’s Memorandum directed PTAB judges to consider “the median time from submission to disposition of civil cases in districts where parallel litigation exists.”

2. 2022 PTAB Reform Act

June 2022 was a busy month for PTAB development.In addition to addressing the Director’s Memorandum dummy, June saw the introduction of the PTAB Reform Act of 2022. Let’s take a look at some key terms.

1. a) nails fintib’s The law precludes consideration of parallel proceedings (ie, in the district court and the ITC) when deciding whether to initiate. Given the Director’s memorandum, the short-term implications (assuming this provision is implemented while Director Vidal remains in her seat) may not be as significant. However, the Act would prevent the pendulum from returning to the patent owner when a future Commissioner is finalized.
2. b) The review must be completed within 120 days of the final written decision. This provision provides welcome certainty about how long parties can expect their requests for reconsideration to be suspended after a final decision (FWD).
3. c) Phillips Construction of Claims by Law. This law leaves the readjustment of Director Iancu’s interpretation of the PTAB’s claims to the district court from the broadest reasonable interpretation. Phillips Standard statutory. This also prevents future pendulum swings.
4. d) More parties can appeal. As it stands, not every petitioner who wants to appeal his FWD against him is in a position to do so. The law extends to “a dissatisfied party who, as a result of the determination, reasonably expects another person to assert estoppel against the party under §315(e).” . It remains to be seen whether this provision will be retained under the effective damages requirement of Article 3.

of open sky Saga

Anyone who’s been following this year’s PTAB has heard an interesting story: open sky. Let’s summarize:

• VLSI wins a $2 billion judgment against Intel in West Texas.
• Following the ruling, OpenSky was formed to file an IPR challenge to VLSI’s ruling. OpenSky’s petition relied solely on expert declarations filed by Intel in previous IPRs and pieced together parts of Intel’s petition that were rejected. A review conducted by the PTAB.
• After institutionalization, OpenSky sent an email to VLSI, revealing that the petition was a tenacious game to extract judgment protection payments from VLSI.
• Finally, the Director through the postEarth Rex Director Review Process – Participated in review. open sky Institution decision. The Director discovered that OpenSky had misused his IPR process and issued an order preventing further active participation in the IPR and stating why OpenSky should not be financially sanctioned.
• The director also ordered the panel to reconsider the agency’s decision on the basis of the “persuasive merit” criteria it determined had been met. So while IPR he could go ahead without OpenSky, Intel (an otherwise time-limited entity) piloted the ship.
• VLSI is working to terminate the procedure based on good reason Intel had the opportunity to prove invalidity in district court, but effectively argued it didn’t. That motion remains pending.
• On 22 December, Secretary Vidal made another decision, this time formally dismissing OpenSky from the proceedings, affirming the Panel’s “persuasive merits” decision and telling VLSI that the Secretary was misleading. I ordered Intel to explain why it should not pay Intel’s attorneys’ fees for the dispute. About secondary symptoms.

So where does this leave us? This puts VLSI in a position to defend a petition filed as part of a fraudulent scheme. It also suggests that the PTAB is willing to deal with cheating (at least blatant and egregious cheating). But the lack of decisive and swift financial sanctions in the first place (although they are still possible) leaves many wondering where the line must be crossed. Vidal’s justification order directed to VLSI further suggests that the PTAB seeks to crack down on all kinds of potential wrongdoing, but it does not involve the filing of fraudulent petitions. Some may wonder if a separate lawsuit without the VLSI would have been a more influential instrument. This story will almost certainly continue in 2023, as VLSI faces an uphill battle to determine “compelling merit”.

4. Director review nearing clarification

Much of 2022 was concerned with anticipating breakthroughs Earth Rex A decision that never came. Instead of fundamentally changing with PTAB, Earth Rex Arguably, it has implemented a system of director reviews that is exponentially more demanding than is permitted. Provided updated interim guidance. No big surprises here. Most recently, Secretary Vidal suggested that the Secretary’s review would replace the Prior Opinion Panel with something akin to an “error correction” panel. Please keep an eye on this next year.

5. Notable Federal Circuit Decisions

This year, the PTAB’s Review Court made important decisions that will affect PTAB practice going forward.

a) Year off to an interesting start with Federal Circuit decisions Caltech vs. Broadcom Ltd., 25 F.4th 976 (Fed. Cir. 2022).Therefore, the court dismissed show industries and “Clarif”[ied] That estoppel applies not only to the claims and grounds asserted in the petition and initiated for consideration by the Board, but also to any claims not set forth in the petition but contained in the petition that reasonably Applies to all grounds that may have been claimed. ” identification., at 991. This ruling restores IPR estoppel to what appears to be the original intent of the US Invents Act, a welcome development for patent owners.

b) Another case that caught the attention of many patent practitioners was a court decision. Nippon Shinyaku Co., Ltd. v. Sarepta Therapeutics, Inc.., 25 F.4th 998 (Fed. Cir. 2022). There, the court confirmed that a party could terminate her ability to file an IPR petition through a venue choice clause, similar to practice requiring arbitration in district court cases.

c) The Court also took the opportunity this year to clarify that there were discussions about possible disclaimers arising from IPRs. In particular, Trend Micro Inc. v. Cupp Computing AS, 53 F.4th 1376 (Fed. Cir. 2022), the court clarified that the disclaimer does not apply to proceedings in which it is drafted. Disclaimers apply only forward-looking in subsequent proceedings. An ongoing self-help disclaimer is not an option.

As we hit a corner in 2023, we can expect continued attention to PTAB reform by Congress and/or Secretary Vidal.

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Author: Yavzunlu