It’s the PTAB, stupid
Coming towards the end of President Trump’s first administration and it’s clear that his term has not produced the same kind of legislative IP landmark as President Obama’s first four years brought in the shape of the America Invents Act (AIA).
Whether you think that’s a good or bad thing may come down to your views on the AIA’s principal progeny - the Patent Trial and Appeal Board - but either way, while the last four years haven’t delivered the same kind of banner Congressional achievement, Trump’s time in the White House hasn’t been quiet in terms of IP and policy.
Allegations of IP theft have underpinned discussions around a new trade agreement with China and helped heighten geo-political tensions between the pair. Patent rights, meanwhile, have hovered in the background over discussions to lower drug prices.
What's more, there has been the series of reforms from the USPTO under Director Andrei Iancu and a shifting of the goalposts around standard essential patents from the Department of Justice led by activist antitrust chief Makan Delrahim. These moves have generally been welcomed by those patent owners who did not feel quite as positive about the series of reforms introduced during eight years of President Obama.
So where might the focus be in the next four years during either a second Trump term or a new Biden administration? Well, it would seem safe to assume that attempts to reform section 101 will re-surface, despite the difficulties that various stakeholders have had in finding consensus on a possible bill.
IP theft and patent rights in general will also presumably remain in the picture when it comes to China trade relations and attempts to lower prescription drug prices - particularly those that apply to any covid-19 treatments and a possible vaccine.
But beyond that, it seems that the workings of the PTAB are going to loom ever larger in the policy landscape. USPTO head Iancu trumpeted early in his tenure that it was a “new day” at the Board and a series of reforms, as well as a string of precedential decisions, have certainly brought about plenty of change to the world of inter partes reviews.
That new day, however, has drawn some strong opposition from big tech. At the end of August, a quartet from Silicon Valley - composed of Apple, Cisco, Google and Intel - filed a lawsuit against the USPTO in an attempt to block the application of a relatively new rule which governs when an IPR can be denied where there is a parallel district court case in play.
As we reported earlier this year, there has been a sharp uptick in the use of discretionary denials at the PTAB, handing patent owners a rare bright spot at the board.
For serial IPR filers such as Apple and Google, the approach of many district court judges to stay an infringement suit when a review has been filed has clearly worked in their favour. The PTAB’s new rule and the proclivity of a few judges, most notably Judge Alan Albright in the Western District of Texas, not to stay a suit therefore represents a marked turning of the litigation tide.
The fact that the quartet have taken the very public step of filing suit in the Northern District of California underlines the depth of feeling in parts of the Valley. Shortly after the case was filed, Cisco general counsel Mark Chandler turned to his company’s blog to explain more about the thinking behind the case.
In that he claimed that the use of discretionary denials at the Board went against lawmakers' intentions when they created the post-issuance regime. “Congress wanted timely IPRs to proceed, regardless of the pendency or pace of parallel district court litigation,” he wrote.
The case has come amid plenty of speculation in Washington DC patent circles that the approach to discretionary denials is about to be enshrined in a new rules package.
Whether that now materialises with the Northern California suit in motion remains to be seen. However, the case points to where some of the giants of Silicon Valley are going to be placing their patent policy chips in the next four years.
Should Iancu opt not to serve in a Trump second term, then the focus will shift to how a new director handles the case and the growing use of discretionary denials. That might also mean that IP issues move up the policy agenda for big tech as they did in the run-up to and in the aftermath of the AIA.
Alternatively, if Biden wins in November, the Valley will surely be using its considerable influence and lobbying dollars with the Democrats to have their say on who heads the USPTO. In turn, they’ll no doubt be making their case for a return to the good ‘ol days at the PTAB.