11.25.18
Opponents of the Patent Trial and Appeal Board (PTAB), People Who Profit From Litigation, Accuse PTAB of Horrible Things to Stir up Imaginary ‘Controversies’
Summary: The abundance of inter partes reviews (IPRs) which invalidate US patents by the Patent Trial and Appeal Board (PTAB) may mean very little litigation in years to come; that does not motivate and in fact very much demoralises those who make a living out of patent lawsuits
PTAB faces some hostilities from the new Director of the U.S. Patent and Trademark Office (USPTO), who cites perceived ‘issues’ expressed by patent maximalists like himself. The reality of the matter is, companies that actually make something support and appreciate PTAB.
Watchtroll, as always, keeps bashing PTAB. As recently as yesterday (Sunday) Steve Brachmann wrote about PTAB invalidating yet another patent and one day earlier Watchtroll had published “The PTAB Promotes Petitioner Promiscuity” (yes, this anti-PTAB extremists’ site used the word “promiscuity” and maybe tomorrow these extremists will call judges “prostitutes”).
These patent lawyers and law firms are awful. The latest attack comes from David Wanetick, who calls himself “a world-renowned authority on the issue of intellectual property valuation” (there is no such thing as "intellectual property" as we last explained yesterday).
PTAB nowadays uses or leverages § 101 to squash hundreds of software patents per month. It is not hard to imagine who would oppose that.
Dennis Crouch constantly complains about US courts invaliding fake patents that are software patents. Here’s a new example:
For the past several years, I have been conducting an annual patent law moot court competition at Mizzou. This year – the eighth annual – the case was was captioned as an appeal of a recent dismissal by District Court Judge Indira Talwani in Cardionet, LLC v. Infobionic, Inc., 2018 U.S. Dist. LEXIS 177305, 2018 WL 5017913 (D. Mass October 16, 2018). In her decision, Judge Talwani dismissed the case for failure to state a claim — ruling CardioNet’s heart monitor patent is directed to an abstract idea rather than a patent eligible invention. U.S. Patent Number 7,941,207 (“the ‘207 patent”). The moot court is sponsored by McKool Smith and so the winner receives $1,000.
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CardioNet sued InfoBionic for infringement in March 2017. Rather than filing an answer, InfoBionic filed a Motion to Dismiss for “failure to meet the pleading standard of Twombly and Iqbal and for patent ineligibility of the ‘207 patent pursuant to § 101.” While the district court was considering the briefed motion, the Federal Circuit decided Aatrix and Berkheimer but did not permit supplemental briefing regarding material facts at issue in the case. The district court then granted the motion to dismiss with prejudice – finding the claims invalid as directed to an abstract idea. The court explained “the innovation of the … patent may be to use computer equipment and logic to monitor the variability of beats, but nothing in these claims places any limitation on that abstract idea.”
Janal Kalis highlights (as usual) the rare exceptions to the norm, e.g. this PTAB intervention that overturned an examiner’s decision/judgment: “The PTAB Reversed an Examiner’s [Section] 101 Rejection of Claims for a Method of Making an Infeasible Assembly of Parts Feasible: https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017003103-10-22-2018-1 …”
Here’s another: “The PTAB Reversed a [Section] 101 Rejection of Claims in an Airbus Defence Patent Application: https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017010645-09-27-2018-1 …”
Those are very rare. They’re also far less interesting or relevant than Federal Circuit appeals.
We understand that these prominent patent maximalists aren’t happy with PTAB; but their motivation is rather clear; alluding to another PTAB determination of obviousness (escalated to CAFC), Watchtroll wrote:
On Friday, November 9th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in NuVasive, Inc. v. Iancu, which vacated certain findings of the Patent Trial and Appeal Board (PTAB) in an inter partes reexamination proceeding involving a NuVasive patent covering a system and methods for minimally invasive surgical procedures. The Federal Circuit panel of Circuit Judges Pauline Newman, Raymond Chen and Todd Hughes determined that on the issue of secondary considerations the PTAB erred in finding no nexus between NuVasive’s claimed method and the surgical procedure actually commercialized by NuVasive. The panel also held that further fact-finding was required in order to determine whether an asserted prior art publication teaches a certain nerve-monitoring technique necessary to support the Board’s determination of obviousness. Therefore, the decision of the PTAB was vacated and the case remanded for further proceedings consistent with the Court’s opinion.
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NuVasive asserted the ‘057 patent in an infringement suit filed against Globus Medical in October 2010. The following February, Globus filed the request for the reexamination on claims of the ‘057 patent to determine obviousness based on combinations of four pieces of asserted prior art. In the first office action, the examiner rejected all claims as obvious because all of the references pertained to minimally invasive surgical techniques and a skilled artisan would have found it obvious to combine them to achieve the claimed system and methods.
This is another case of cherry-picking because, based on last year’s year-long statistics, CAFC affirms PTAB’s decisions about 80% of the time (in the rare cases it even expresses willingness to reevaluate).
All in all, we expect to continue to see such attempts to make “scandals” out of nothing, using words like “promiscuity” to characterise PTAB just doing its job, which is to assess patents’ validity after a grant, not just before it. █
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