Board Denies Petition for Claims Not in Litigation

It was a slow summer week at the Board with just 23 new petitions—one post grant review and 22 inter partes reviews; in district court, a relatively average 63 new patent filings and 53 terminations rounded out the count. The major streaming companies, including Disney, challenged WAG Acquisitions [of Woodsford Litigation Funding] patents before the Board; SharkNinja challenges Bissel patents on vacuum cleaners; and FedEx challenged patents owned by Raymond Anthony Joao’s ultra-litigious Transcend Shipping. Apple lost three challenges at institution against an Identity Security LLC (f/k/a Integrated Information Solutions Corporation]. In the district court high-volume litigant M4Siz roped in more retailers, including Abercrombie and Fitch, Under Armor, Victoria’s Secret, and J Crew, bringing the total defendant count to 31; and more semiconductor litigation bloomed, with multiple campaigns filing against Micron and TI this week alone.

Board Discretionarily Denies Second Petition Based on Claims Not Being Asserted in Litigation: Iancu-era discretion strikes again: in IPR2022-00150, the Board denied one of two petitions filed on the same day on different claim sets, in large part because the denied petition challenged claims that weren’t currently in litigation. The panel reasoned that, under the Iancu-era updated trial practice guide’s guidance that only in “rare ‘circumstances” should “more than one petition may be necessary,” and used that to agree with the patent owner here that the second set of claims—both challenged different claim sets—should not be instituted under the Board’s discretion, regardless of merit.

It is worth again noting that the trial practice update guide in question was posted to the USPTO website in 2019 sua sponte, and did not undergo notice-and-comment rulemaking or benefit from any substantial notice or comment from the public, and likely lacks the force and effect of law.

SK Hynix DJs Aggressive NPE Longhorn IP: In perhaps a sign of the times, the aggressive licensor Longhorn IP—known primarily for asserting a handful of acquired semiconductor portfolios through various subsidiaries and for being generally the first to sue as an Avanci licensor—has been DJ’d by semiconductor company SK Hynix for a series of allegedly “unreasonable demands” in extended licensing discussions with the company.  Longhorn—the (somewhat) recent creation of Mr. Kahled Fekih-Romdhane and his funding company, Tanit Ventures, Inc.—is accused, in the complaint, of controlling frequent litigants Trenchant Blade Technologies LLC, Lone Star Silicon Innovations LLC, and Hamilcar Barca IP LLC, as listed on Longhorn’s website, as portfolio companies Mr. Fekih-Romadhane controls and whose primary aim is to license the semiconductor industry to acquired portfolios. The complaint seeks noninfringement of at least seven patents, including U.S. 9379079, 7494846, 8669619, 7056821, 8848462, 9147664, and 8086938.

Board Issues Rare Consolidation Request: Is it a sign of things to come? The PTAB has long had, but rarely used, a broad power to consolidate hearings, preferring, in the first decade or so or practice, to largely let IPRs run in parallel.  Consolidation—which differs from joinder in many ways, at least procedurally—gives the Board flexibility to change page limits and briefing and would be heavily favored in new legislative proposals before Congress.

Jonathan Stroud

Jonathan Stroud is General Counsel at Unified Patents, LLC, where he manages a growing team of talented, diverse attorneys and oversees a docket of administrative challenges, appeals, licensing, pooling, and […see more]

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