The Obama administration’s America Invents Act of 2011 was supposed to improve the U.S. patent system and reduce patent litigation.[1] A decade later Apple Inc., one of the original proponents of the “AIA,” is discovering that its laudatory goals are not aligning with reality.
The goal of reducing conventional patent litigation was to be achieved in part by a significantly enhanced Patent Trial and Appeal Board (PTAB) wielding inter partes review (IPR) and post grant review (PGR) powers to redirect “a lot of” patent disputes from the district courts to the PTAB. While the PTAB has indeed stepped into many patent challenges – to an eye-watering degree – the expanded PTAB role has not ended entanglements with federal courts.[2] Just ask Apple.
VirnetX Inc. has bruised Apple multiple times in patent litigation and has received, among other awards, a $502.8 million payday from Apple.[3] But the PTAB later invalidated two of VirnetX’s four patents on which that verdict was based. This week VirnetX told the Court of Appeals for the Federal Circuit that the PTAB decision must be tossed out.[4] VirnetX is attempting to invoke the Federal Circuit’s 2019 Arthrex ruling, which held in part that the PTAB administrative patent judges were unconstitutionally appointed.[5] So, according to VirnetX, the PTAB’s invalidation of the 2 patents must be vacated.
Also earlier this week, Apple found itself across the country arguing that a private group US Inventor should not be allowed to intervene in Apple’s California lawsuit challenging the legality of the PTAB’s use of discretion to deny patent reviews.[6] In the California suit, Apple and other tech companies are arguing that the PTAB’s Fintiv rule, which permits the PTAB to deny reviews when there is a closely timed, parallel district court trial, conflicts with the AIA and should be struck down.[7]
Regardless of the outcomes of its disputes in Virginia, in California, and elsewhere, Apple is discovering that the AIA and its PTAB progeny is not keeping Apple out of federal courts as much as it might have hoped. If you or your company have been accused of patent infringement or you are a Patent Owner with an infringed patent, I invite you to call me to discuss options ranging from prelitigation settlement actions to federal litigation or IPR/PGR proceedings. You can reach me at 864.351.2468 or Ben@Thrive-IP.com. Please also visit us at www.Thrive-IP.com.
[1] Amanda Becker, Patent Reform Measure Ignited Fierce Lobbying Effort, The Washington Post, March 27, 2011, in Capital Business.
[2] See Is the U.S. Patent Trial and Appeal Board Still a Patent “Death Squad”? | LinkedIn.
[3] There is a long line of cases by VirnetX against Apple regarding infringement of various VirnetX patents dealing with network security features and Apple’s VPN on Demand and FaceTime. See, e.g., VirnetX Inc. et al. v. Apple Inc., case number 6:10-cv-00417 (E.D. Tex. 2010).
[4] VirnetX Inc. v. Mangrove Partners Master Fund Ltd. et al., case numbers 20-2271 and 20-2272 (Fed. Circ. 2020).
[5] See The Federal Circuit Got Arthrex Right But The Supreme Court Is Likely To Reverse. | LinkedIn.
[6] Apple et al. v. Iancu, case number 5:20-cv-06128, (N.D. Calif Aug. 2020) in which US Inventor wishes to intervene to argue that the USPTO should formalize IPR/PGR policy through rulemaking processes rather than permitting creation of standards by PTAB “precedential” designations.
[7] See “Discretionary” Institution Of Inter Partes Review Petitions Will Almost Always Be Granted by the Patent Trial and Appeal Board | LinkedIn (discussing Fintiv–NHK Spring factors).