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Taketh And Giveth

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Unlike in staider areas of legislation reminiscent of ________ (fill-in-your-own clean on this one), patent litigation developments come at us within the IP world with the frequency, energy, and fury of a Nazare megawave. Maybe that’s an exaggeration, since not each growth within the patent world is that momentous, however I believe the wave imagery is suitable. Because patent litigation is usually a bumpy experience, even for probably the most frequent individuals. Take the column I wrote lower than a month in the past, on Apple’s (and different Big Tech compadres’) wrestle with the PTAB’s seemingly newfound predilection for issuing discretionary denials in sure IPRs — principally what place there was parallel district court docket litigation that promised to complete ahead of the IPR course of would. With Apple being an early instance of the results of such a denial, as its try and avert a $500 million verdict — based mostly partly on a pending IPR — was thwarted by the PTAB’s train of its discretionary denial energy. The choice towards Apple undoubtedly gave succor to different patent holders, significantly these lucky sufficient to have secured early trial dates of their pending patent instances. But maybe any such celebrations have been before its time, underscoring as soon as once more the ever-shifting nature of patent litigation follow, particularly earlier than the PTAB.

As anybody with an energetic PTAB follow is aware of, it’s by no means actually protected to attempt to predict how a specific panel will apply the assorted multifactor checks (e.g., NHK-Fintiv, General Plastic, and so forth.) that the PTAB is fond of building on precedential procedural points. As a fee-driven entity depending on petitioners deciding to provoke proceedings, the PTAB is unquestionably delicate to any situation that daunts filers out of concern that they won’t get a good shake earlier than the tribunal. Moreover, the PTAB has been rightfully praised for its efficiency throughout the COVID-19 pandemic, a efficiency that I highlighted (with the assistance of Lex Machina) in a column again in August. In reality, I proceed to imagine that even with the latest became greater chance of discretionary denials: “Pandemic or no pandemic, the PTAB’s outsized role in the patent ecosystem will continue apace.”

The continued attractiveness of the PTAB as a discussion board for patent defendants is a simple prediction to make, contemplating how rapidly it has moved to dispel any suggestion that the rocket docket/NHK-Fintiv interaction will current a simple path to discretionary denial earlier than the PTAB for patent house owners. To illustrate the purpose, let’s take into account a latest PTAB choice — in yet one more the case involving Apple — what place the PTAB refused to permit a discretionary denial request made by the patent proprietor, Parus Holdings, Inc., to disclaim establishment of the IPR. Relying closely on the PTAB’s post-Fintiv informative choice in Sand Revolution, the panel in Parus granted establishment in Apple’s favor based mostly on two key info.

First, it discovered that COVID-19 uncertainty across the trial court docket’s (the ever-popular Judge Albright within the Western District of Texas) skill to stay with the proposed trial date cautioned towards figuring out that the PTAB’s ultimate written choice would come after trial can be performed. Second, it famous that the energy of Apple’s place on the deserves favored establishment, particularly what place not much of worth had already occurred within the trial court docket associated with validity. In quick, regardless of what gave the impression to be a traditional instance of a good (at the very least for the defendant) rocket docket/NHK-Fintiv interaction, the PTAB nonetheless determined within the favor of the petitioner Apple.

While the lead to Parus favored the petitioner, it might be folly to imagine that the rocket docket/NHK-Fintiv interaction now not presents any threat for IPR petitioners. Unsurprisingly, Parus itself moved for rehearing on the PTAB’s establishment choice, arguing primarily that since Albright is at present conducting patent trials, the PTAB was mistaken in assuming that the Parus/Apple trial wouldn’t go off on its scheduled July 2021 (earlier than the PTAB’s ultimate written choice date) trial date — particularly what place Apple itself had agreed to that trial date. As of this writing, the PTAB had not but dominated on the rehearing request. But it’s going to undoubtedly be of interest to those that would to know simply how viable the rocket docket/NHK-Fintiv interaction is as a method for avoiding IPR threat as a patent proprietor. Which means it is going to be necessary for any patent proprietor (and their attorneys, and litigation funders, too) contemplating whether or not and what place to file its patent instances, at a minimal.

Ultimately, the 2 differing selections in Apple-filed IPRs underscore the significance of counsel and their purchasers monitoring the PTAB carefully for developments across the discretionary denial concern. While protecting in thoughts that the PTAB is ready up for — and has confirmed — that it could deal with the invalidity features of a case at the very least as well, if not higher, than the assorted approaches to invalidity espoused by totally different district courts across the nation. Whether the rocket docket/NHK-Fintiv interaction leading to discretionary denial survives extra PTAB scrutiny is clearly up for debate at this level, and additional developments beg a watchful eye. It is sweet to begin to handicap whether or not SCOTUS will rule for or towards the PTAB in Arthrex. But for these training within the PTAB trenches, contemplating how the PTAB taketh and giveth on the discretionary denial concern is extra of the second.

Please be at liberty to ship feedback or inquiries to me at gkroub@kskiplaw.com or through Twitter: @gkroub. Any subject recommendations or ideas are most welcome.


Gaston Kroub lives in Brooklyn and is a founding companion of Kroub, Silbersher & Kolmykov PLLC, an mental property litigation boutique, and Markman Advisors LLC, a number one consultancy on patent points for the funding neighborhood. Gaston’s follow focuses on mental property litigation and related counseling, with a robust give attention to patent issues. You can reach him at gkroub@kskiplaw.com or comply with him on Twitter: @gkroub.

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