PTAB hasn't the incentive of examiners (to grant a lot of patents) and is willing to reject many upon reassessment
THE oftentimes-ferocious attacks on the US appeal board (PTAB) that deals with low-quality US patents have slowed down*. There weren't many of them over the past week. We watch these things closely enough and recently with greater concern because the intention of these attacks is to change the stance/policy of the USPTO and the US Supreme Court (due to rule on Oil States in a matter of just months).
Philips had asserted infringement of seven patents: Patent Nos. 6,147,458; 6,250,774; 6,561,690; 6,586,890; 6,788,011; 7,038,399; and 7,352,138. In due course, Wangs filed invalidity contentions against the patents-in-suit, and at the one-year deadline, Wangs petitioned for IPRs. The PTAB granted the IPRs for six of the seven patents. While the court stayed the case, the PTAB handled the IPRs, ruling for Wangs on some claims but not others. In the immediate motion, Philips moved to prevent Wangs from relying on prior art left out of its contentions under local rules, and to estop Wangs from relying on prior art included in its contentions but not in its IPR petitions.
On December 19, 2017, a seven-judge expanded PTAB panel ruled that the University of Minnesota (UM) waived its Eleventh Amendment immunity defense when it filed a patent infringement action in federal district court. Eleventh Amendment immunity had been the focus of several previous PTAB decisions, but these previous decisions did not involve a sovereign who had filed an infringement action in federal court before an IPR petition was filed.
In early 2017, the PTAB held that a state university was immune from IPR challenge under Eleventh Amendment state sovereign immunity. Covidien LP v. Univ. of Florida Research Found. Inc., IPR2016-01274, Paper 21 at 27. Mindful of the Covidien decision, Ericsson Inc. filed several IPR petitions against the Regents of UM and noted that the Covidien case was distinguishable because the University of Florida had not waived its sovereign immunity by asserting its patent in federal district court, whereas UM had asserted its patent in the US District Court of Minnesota. UM moved to dismiss Ericsson’s IPR petitions, arguing that filing of the lawsuit in federal district court did not constitute a waiver of immunity at the PTAB.
Apple has filed a motion with the PTAB, here, asserting that letters from the former CEO of a patent owner to an original panel, a substitute panel, and Commerce Secretary Wilbur Ross constituted improper ex parte communications that warrant reversing the PTAB’s findings in favor of the patentee and, instead, either entering judgment in Apple’s favor or at least granting a new trial.
Boiled down, Apple argues that after the decision to institute was granted, the former CEO (and still “advisor” to the patentee) sent letters to the panel that had granted institution, and those letters were not made of record. That panel was replaced, without explanation to Apple (or anyone from what I can tell), and a substitute panel then took over the matter.
The former CEO then sent more letters — to both the PTAB chief judge and to the substitute panel which, again, were not made of record. (It’s not clear to me that Apple or the patentee knew of the letters at this time.). Other letters to the chief judge, the substitute panel, and even the Secretary of Commerce followed and the letters were not made of record and Apple was not notified (and, again, neither was the patentee, from what I can tell).
Then on September 18, the patentee posted the letters — calling them “independent” — on its web page. Then there were more letters.
The substitute panel in late November in its final written decision and found Apple had not established the claims were unpatentable.