IP UPDATE
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Results for "Trademark appeal"
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No More Bites at the Apple: Intervening Junior User Can Force You to Get Your Head Out of the Cloud(s)

by | Feb 4, 2021 |

Addressing how a mark’s intervening junior user’s success can affect a senior user, the US Court of Appeals for the Fourth Circuit upheld a grant of summary judgment in favor of the junior user and the issuance of a permanent injunction for any commercial use of the disputed terms by the senior user. RXD Media, LLC v. IP Application Dev. LLC, Case No. 19-1461 (4th Cir. Jan. 21, 2021) (Keenan, J.) (joined by Gregory, J., and Floyd, C.J.)

RXD and Apple (here embodied also in IP Application Development, a company formed and wholly owned by Apple for the purpose of registering the “ipad” mark) have shared a long history of trademark litigation, initiated by RXD, over the use of the “ipad” mark. Prior to this appeal, the district court ruled in favor of Apple on summary judgment and permanently enjoined RXD from commercially using the terms “ipad” or “ipod.”

RXD claimed that the district court failed to account for RXD being the “first user” of the “ipad” mark; that Apple did not establish a distinctive, secondary meaning of “ipad” before RXD’s use; that Apple failed to show a likelihood of consumer confusion based on both parties’ use of “ipad”; and that the district court erred in rejecting RXD’s claim that “two of Apple’s trademark applications were void because Apple lacked a bona fide intent to use the ‘ipad’ mark for the services listed in those applications.” The Fourth Circuit, however, was not convinced.

The Fourth Circuit found that even if RXD was technically the senior user of the mark at issue, its expanded, “wholly altered” use of the mark, which now focused on “cloud storage” services and for which it now claimed protection, was not entitled to such protection, because the use occurred “on the heels of Apple’s [i.e., the intervening junior user’s] commercial success in releasing” the iPad. By that point, Apple had already “experienced undeniable commercial success, ha[d] promoted its products through regular advertising using the mark, and ha[d] obtained extensive media coverage regarding its ‘iPad’ device.” As such, the Court concluded that Apple’s “ipad” mark was strong and distinctive, noting that consumers were likely to and had already experienced confusion regarding the “ipad” mark. The Court further concluded that, because RXD was a “proven infringer” of the mark, injunctive relief ordered by the district court in favor of Apple was justified. Finally, the Court rejected RXD’s intent argument, stating that Apple was not required to prove a bona fide intent to use the mark for services it did not identify in its relevant trademark applications—Apple’s development of “cloud storage” services, while not explicitly named in Apple’s trademark applications, was encompassed by “the context of the strength of Apple’s brand” and was within the “breadth of [its] products and services.”

Practice Note: Practitioners should take careful note of how their clients use their mark, even if such use can be technically classified as “senior,” and how the mark evolved over time and whether it happened to change coinciding [...]

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2020 IP Law Year in Review: European Issues

by , and | Jan 26, 2021 | , , ,

Executive Summary

From a German perspective, 2020 saw highly interesting developments that may well have an impact even beyond the borders of Germany. For example, the Federal Court of Justice (Bundesgerichtshof) in Sisvel v. Haier handed down a landmark decision on fair, reasonable and non-discriminatory (FRAND) law. This decision has already affected many FRAND cases tried before lower instance courts. Generally speaking, the FRAND law judgments issued in Germany in 2020 may have more upsides for standard-essential patent (SEP) holders than for implementers of standardised technologies.

A successful constitutional complaint against the German act to ratify the Unified Patent Court (UPC) Agreement delivered a serious blow to the attempt to establish the UPC. However, German Federal Parliament and Federal Council managed, just before the end of 2020, to pass another UPC ratification act, thereby rectifying the mistake that led to the success of the constitutional complaint. The fate of the UPC project remains somewhat unclear, however, in light of newly filed constitutional complaints.

Finally, 2020 saw the United Kingdom officially withdraw from the European Union on 1 February and become a third-party country after a transitional period that ended on 31 December. This event has multiple consequences for EU intellectual property rights, particularly EU trademarks, depending on whether they were filed or registered as of 1 January 2021.

European Issues

  1. Germany and the UPC
  2. German Federal Court of Justice on FRAND Law: Sisvel v. Haier
  3. How Does Brexit Affect European Trademark Rights?

2021 Outlook

Even though there were major developments in Germany regarding FRAND law and the UPC in 2020, these topics are far from being finally settled.

After the Federal Court of Justice’s Sisvel v. Haier decision led to relatively SEP-holder-friendly decisions by the Munich I District Court and the Mannheim District Court, the Düsseldorf District Court referred several FRAND-related questions to the CJEU in November 2020. The expected CJEU decision has the potential to shape the future of FRAND law not just in Germany, but in the whole European Union.

It will be interesting to follow the further development of the UPC project in the light of new constitutional complaints filed against Germany’s new act to ratify the UPC Agreement. These complaints may put another hold on the UPC undertaking. In any event, Germany is not expected to deposit its instrument of ratification very soon because the UPC still needs time to set up its infrastructure, including the appointment of judges.

The question of whether competitors and consumer associations can issue warning letters for violations of the General Data Protection Regulation (GDPR) continued to occupy the courts in 2020, and likely will do so in 2021 as well. According to a decision of the Stuttgart Court of Appeal dated 27 February 2020 (2 U 257/19), competition associations can issue warning letters for violations of the GDPR. The Berlin Court of Appeal previously affirmed this on 20 December 2019 (5 U 9/18) for consumer associations in the [...]

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CJEU Referral on Preliminary Injunctions by the Munich I District Court

by | Jan 21, 2021 |

The 21st Civil Chamber of the Munich I District Court has referred a question on the availability of preliminary injunctions against patent infringements to the Court of Justice of the European Union (CJEU) in Luxembourg (Munich I District Court docket no. 21 O 16782/20, decision of 19 January 2021).

Key takeaways

  • The Munich I District Court has referred a question to the CJEU on whether the current standard for granting preliminary injunctions in patent litigation should be lowered.
  • The Munich judges indicate that the current standard imposes an undue burden on patentees, especially for newly issued patents.

IN DEPTH

Background

Granting a preliminary injunction requires a sufficient likelihood that the asserted patent is valid. Under current German appellate case law however, it is usually not sufficient to meet that standard by simply showing that the asserted patent has been granted by a respective patent office. Rather, with certain exceptions only, it is required that validity has been confirmed in inter partes invalidity proceedings (i.e., in opposition proceedings before the European Patent Office or the German Patent and Trademark Office, or in nullity proceedings before the Federal Patent Court). In the opinion of the Munich I District Court, this standard may impose an undue burden on patentees in view of the European Directive 2004/48/EC on the enforcement of intellectual property rights. The Munich judges reason that first, it would be difficult to enforce newly granted patents. Second, a patentee has little influence on whether validity of his patent will be challenged by third parties.

At the same time, and as mentioned by the Munich I District Court, it is widely accepted that there are exceptions that apply to the basic rule that that validity should first be confirmed in inter partes invalidity proceedings. For example in the landmark “Olanzapine” case, the Düsseldorf Appeal Court issued a preliminary injunction based on a patent that had been invalidated in first instance nullity proceedings, while an appeal in the invalidity proceedings was pending. Therefore, while the relevant patent had not survived first instance invalidity proceedings, a preliminary injunction was granted.

The question referred

The Munich I District Court referred the following question to the CJEU:

Is it in line with Article 9(1) of Directive 2004/48/EC for the Higher Regional Courts having jurisdiction at final instance in proceedings for interim relief to refuse in principle to grant interim measures for infringement of patents if the patent in dispute has not survived opposition or nullity proceedings at first instance?

Practice Note:

It will be interesting to follow the further development in connection with this referral, as the implications of the CJEU decision are likely to be far-reaching. The Munich referral may lead to new enforcement opportunities and strategies for patentees. At the same time, the Munich referral is in tension with current reform of German patent law which, if enacted, will emphasize a hurdle for injunctions, namely that injunctions must not be disproportionate.



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PTO: Board to Align Indefiniteness Approach in AIA and District Court Proceedings

by | Jan 21, 2021 |

On January 6, 2021, US Patent and Trademark Office (PTO) Director Andrei Iancu, Commissioner for Patents Andrew Hirshfeld and Chief Administrative Patent Judge Scott Boalick issued a memorandum to the members of the Patent Trial and Appeal Board to align the Board’s approach when deciding indefiniteness issues under 35 USC § 112 in America Invents Act (AIA) post-grant proceedings more closely with district court proceedings. The memo was issued under the PTO director’s authority to set forth binding agency guidance to govern the Board’s interpretation of statutory provisions. The memo cited to similar recent changes to the approach to claim construction in such proceedings, and stated that aligning “the indefiniteness approach [used] in AIA post-grant proceedings [to district court proceedings] will promote consistency and efficient decision making among coordinate branches of government that decide similar issues in co-pending proceedings.” The instructed approach, per the Supreme Court of the United States’ 2014 decision in Nautilus, applies to post grant review (PGR) and inter partes review (IPR) proceedings, but not to indefiniteness (or claim construction) issues decided outside the context of AIA reviews.

Post-AIA 35 USC § 112(b) (and pre-AIA § 112, second paragraph) require that “[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” Claims not meeting this requirement are invalid for indefiniteness and may be determined indefinite during PTO examination, on appeal from examination and during AIA post-grant proceedings. In 2014 the US Court of Appeals for the Federal Circuit approved the PTO’s long-standing approach to assessing indefiniteness during patent prosecution in its per curiam In re Packard decision that “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.” At the time, this approach was used agency-wide to analyze questions of indefiniteness, in complement with the office’s broadest reasonable interpretation approach to claim construction.

Despite the Supreme Court’s decision in Nautilus that a claim is unpatentable for indefiniteness if the claim, read in light of the specification delineating the patent and the prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention, the PTO reaffirmed its intent to follow Packard in examination (whether original, appeals or reexamination). In 2018, in the interest of consistency and efficiency, the PTO changed its claim construction standard for post-grant trial proceedings to review a claim of a patent, or a claim proposed in a motion to amend, from the broadest reasonable interpretation to the same Phillips standard that would be used to construe the claim in a district court action.

The memorandum noted that there has been some confusion as to whether the Packard or Nautilus standard should apply in AIA proceedings. While parties to such proceedings argued for one or the other, neither the Board nor the Federal Circuit ruled as to which standard applied. Now, in the interest of clarity, consistency and efficiency, and to “lead to greater [...]

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What’s Cookin’? No Likelihood of Confusion Between Two KITCHEN Marks

by | Jan 21, 2021 |

Addressing the assessment and application of the DuPont likelihood of confusion factors, the US Court of Appeals for the Federal Circuit upheld the Trademark Trial and Appeal Board’s finding of no likelihood of confusion between W WEIGEL’S KITCHEN NOW OPEN & Design and QT KITCHENS & Design for food and beverages sold in the parties’ respective convenience stores. QuikTrip West, Inc. v. Weigel Stores, Inc., Case No. 20-1304 (Fed. Cir. Jan. 7, 2021) (Lourie, J.)

 

 

QuikTrip West has used its mark QT KITCHENS since 2011 in connection with its combination gas station/convenience stores. In 2014, Weigel Stores began using W KITCHENS in connection with its similar stores. Responding to QuickTrip’s cease-and-desist letter, Weigel twice altered its mark: first removing the “S” from “KITCHENS” to make it singular and changing the font, and then adding the words “WEIGEL’S” and “NOW OPEN” (and once again modifying the font). Nonetheless, when Weigel filed an application to register its final modified mark in 2017, QuikTrip opposed.

The Board concluded that there was no likelihood of confusion between the two marks and dismissed the opposition. Although many factors weighed in support of a likelihood of confusion finding—including partially identical and related services, overlapping trade channels and consumers, and similar purchase conditions—the Board ultimately found that the differences between the marks were significant enough to outweigh those other factors.

On appeal, QuikTrip argued that the Board erred in three ways:

  • It improperly assessed the marks’ similarities.
  • It failed to properly consider the evidence of Weigel’s bad faith.
  • It gave undue weight to the marks’ dissimilarities when weighing the DuPont likelihood of confusion factors.

The first DuPont factor considers the similarity (or dissimilarity) of the marks. QuikTrip argued that the Board gave insufficient weight to the shared term “KITCHEN,” while giving undue weight to the other parts of the marks. The Court disagreed: “[i]t is not improper for the Board to determine that, ‘for rational reasons’ it should give ‘more or less weight . . . to a particular feature of the mark’ provided that its ultimate conclusion regarding the likelihood of confusion ‘rests on [a] consideration of the marks in their entireties.'” In this case, the Board properly found that “KITCHEN” is a “highly suggestive, if not descriptive” word when used in connection with these goods and services, and therefore the fact that the marks shared this term did not offset the many differences between the marks.

QuikTrip also challenged the Board’s review of the 13th DuPont factor, which broadly covers any other fact(s) relevant to the effect of the use of the mark, including, for example, a bad faith intent to confuse. QuikTrip argued that this factor weighed in favor of a likelihood of confusion, citing evidence alleging that Weigel photographed QuikTrip stores and marketing materials. The Court pointed to Weigel’s multiple efforts to modify its mark, however, and concluded that [...]

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IP Implications of the Consolidated Appropriations Act, 2021

by | Jan 14, 2021 | , ,

On December 27, 2020, Congress signed the Consolidated Appropriations Act, 2021, into law. The omnibus act includes new legislation affecting patent, copyright and trademark law. A brief summary of key provisions is provided below.

Patents – Section 325 Biological Product Patent Transparency

42 USC § 262(k) was amended to require that the US Food and Drug Administration (FDA) provide the public with more information about patented biological products. Within six months, the FDA must make the following information available to the public on its Database of Licensed Biological Products or “Purple Book,” and it must update the list every 30 days:

  • A list of each biological product, by nonproprietary name, for which a biologics license is in effect
  • The license date and application number
  • The license and marketing status (as available)
  • Exclusivity periods

The amendment requires that the holders of a license to market a biologic drug now disclose all patents believed to be covering that drug. The new law is designed to prevent errors that could delay biosimilars from coming to the market.

Copyrights – The CASE Act of 2020

The Consolidated Appropriations Act incorporates the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2020, as well as legislation designed to increase criminal penalties for the unauthorized digital streaming of copyright-protected content. The CASE Act includes revisions to the Copyright Act, 17 USC §§ 101 et seq., with the goal of creating a new venue for copyright owners to enforce their rights instead of having to file an action in federal court.

The Copyright Claims Board

The CASE Act established the Copyright Claims Board (a small claims court), which is designed to serve as an alternative forum where parties may voluntarily seek to resolve certain copyright claims regarding any category of copyrighted work. A party may opt out upon being served with a claim, choosing instead to resolve the dispute in federal court. A party to a proceeding before the Board may, but is not required to, be represented by a lawyer. A party may also be represented by a law student who is qualified under applicable law, and who provides such representation on a pro bono basis. The Board consists of three copyright claims officers who may conduct individualized proceedings to resolve disputes and must issue written decisions setting forth their factual findings and legal conclusions.

Procedural Matters

The Board must follow the law in the federal jurisdiction in which the action could have been brought if filed in federal court. Because jurisdictional conflicts may arise where a dispute may have been brought in multiple jurisdictions, the CASE Act provides that the Board may apply the law of the jurisdiction that the Board determines has the most significant ties to the parties and the conduct at issue.

Although formal motion practice is not permitted, discovery is allowed on a limited basis, including requests for documents, written interrogatories and written requests for admission. The Board may consider evidence, documentary and (non-expert) testimony, without the application of formal [...]

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This Mashup Is Not a Place You’ll Go – Seuss Copyright Will ‘Live Long and Prosper’

by | Jan 7, 2021 | ,

Presented with a publishing company defendant’s mashup of Dr. Seuss’ copyrighted works with Star Trek in a work titled Oh, the Places You’ll Boldly Go!, the US Court of Appeals for the Ninth Circuit tackled claims of both copyright and trademark infringement, including the defense of fair use and the use of trademarks in expressive works. The Ninth Circuit reversed the district court’s summary judgment in favor of defendants on the copyright infringement claim and affirmed the district court’s dismissal and grant of summary judgment in favor of defendants on the trademark claim. Dr. Seuss Enterprises, L.P. v. ComicMix LLC, et al., Case No. 19-55348 (9th Cir. Dec. 18, 2020) (McKeown, J.)

Seuss Enterprises owns the intellectual property in the works of late author Theodor S. Geisel, better known as Dr. Seuss. Seuss Enterprises carefully yet prolifically licenses the Dr. Seuss works and brand across a variety of entertainment, media, art and consumer goods, including derivative works of Dr. Seuss’ final book, and graduation favorite, Oh, the Places You’ll Go! When Seuss Enterprises encountered a Kickstarter campaign to raise funds for the Oh, the Places You’ll Boldly Go! mashup work created by ComicMix (a company whose employees include an author of Star Trek episodes), it filed suit for copyright and trademark infringement. The district court granted ComicMix’s motion for summary judgment, holding that the Boldly work was a fair use of Dr. Seuss’s Oh, the Places You’ll Go! and that Seuss Enterprises did not have a cognizable trademark infringement claim under the Lanham Act. Seuss Enterprises appealed.

On appeal, ComicMix asserted its defense of fair use by arguing that its copying of the Dr. Seuss works (described at one point in the record as painstaking attempts to create “identical” illustrations) resulted in a parody of the works. The Ninth Circuit examined the facts under the four non-exclusive factors of fair use reflected in § 107 of the Copyright Act:

  • The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes
  • The nature of the copyrighted work
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole
  • The effect of the use upon the potential market for, or value of, the copyrighted work.

Remarking that the outcome of the purpose and character of the use factor influences the assessment of the third and fourth factors, the Ninth Circuit concluded that the Boldly work was not transformative as a parody or otherwise, and that the “indisputably commercial” nature of the work weighed against fair use. The Court explained that a parody exists only if the resulting work critiques or comments on the underlying copyrighted work. The Ninth Circuit cited its decision in another Seuss case (Dr. Seuss Enters. v. Penguin Books), which involved the retelling of the O.J. Simpson murder trial through the lens of The Cat in the Hat. Here, the Court similarly found that Boldly only “evokes” Oh, the Places [...]

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“Icy” Guidance on Polaroid Factors

by | Dec 3, 2020 |

In a “somewhat unusual” trademark case involving directly competing products and marks using the same words, the US Court of Appeals for the Second Circuit reversed in part and affirmed in part the grant of summary judgment for the accused infringer on trademark infringement and dilution claims. The Court found that the similarity of the marks and bad faith on part of the accused infringer weighed in favor of finding infringement. Car Freshner Corp. v. American Covers, LLC, Case No. 19-2750 (2d Cir. Nov. 19, 2020) (Newman, J.)

Car Freshner and American Covers both sell car air freshener products. Car Freshner filed a lawsuit against American Covers alleging that Car Freshner’s trademark “Black Ice” was infringed and diluted by American Covers’ sale of air freshener products using the words “Midnight Black Ice Storm.” The district court rejected Car Freshner’s trademark infringement claim, concluding that “Midnight Black Ice Storm” was not similar enough to “Black Ice” to create a likelihood of confusion about the source of the products. The district court also rejected Car Freshner’s trademark dilution claim, concluding that the marks in question were not sufficiently famous. Car Freshner appealed.

On appeal, the Second Circuit reversed the district court’s entry of judgment for American Covers on the trademark infringement claim. Reviewing the trademark infringement claim using the eight Polaroid factors, the Court noted the lack of guidance regarding how much weight to accord each of the factors. Despite this lack of guidance, the Court was particularly persuaded by two of the Polaroid factors: the similarity of the marks, and bad faith on the part of the accused infringer. As to the similarity of the marks factor, the Court noted that “[i]t is extremely unusual for the mark of a junior user to include two identical words of a senior user’s mark in sequence[,]” particularly when both users are competitors in the same market. Despite the differences in packaging between the two products, the Court found that the similarity of the marks weighed heavily in favor of a finding of trademark infringement. As to the bad faith factor, the Court found that emails produced by American Covers, which revealed that its employees specifically chose product names meant to encourage customers to form a connection between American Covers’ products and Car Freshner’s products, were “explicit evidence of bad faith” on the part of American Covers.

As to the dilution claim, the Second Circuit affirmed the district court’s summary judgment finding, concluding that there was no evidence that either of the marks in question was famous.

Practice Note: Although courts have not provided guidance on how to weigh the Polaroid factors in trademark cases, this case demonstrates that two of the factors (similarity of the marks and bad faith on the part of the accused infringer) can be especially persuasive, particularly when the evidence for these factors is strong.



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Wave Goodbye to Lost Arguments: Waiver Versus Forfeiture Law

by | Nov 24, 2020 | ,

The US Court of Appeals for the Federal Circuit concluded that a patent owner forfeited claim construction arguments on appeal by not presenting them first to the Patent Trial and Appeal Board for consideration. In re: Google Tech. Holdings LLC, Case No. 19-1828 (Fed. Cir. Nov. 13, 2020) (Chen, J.)

Google submitted an application to the US Patent and Trademark Office (PTO) seeking patent claims covering certain means and methods for transferring content to video-on-demand systems. During examination, the examiner rejected Google’s proposed claims based on obviousness in light of certain references. After receiving a final rejection, Google appealed to the Board, relying heavily on block quotes from the references and proposed claims to argue that the examiner improperly found obviousness.

The Board affirmed the examiner’s rejection. Applying the broadest reasonable interpretation standard, the Board construed two claim terms: “costs” and “network impact.” In defining those terms, the Board noted that Google had not, in the course of appealing the examiner’s decision, “cited to a definition of ‘costs’ or ‘network impact’ in the [s]pecification that would preclude the [e]xaminer’s broader reading.” Google appealed.

Google argued that the Board erred in its constructions. The Federal Circuit never reached the merits, however, instead concluding that Google had not properly presented its arguments first to the PTO. The Court described the oft-forgotten difference between waiver (the voluntary and knowing relinquishment of a right) and forfeiture (the failure to make a timely assertion of a particular right). This case, the Court reasoned, was an example of forfeiture, because Google had failed to urge the claim constructions to the PTO in the first instance.

Google contended that the Federal Circuit should nonetheless review the Board’s determination, because the Board actually ruled on the claim constructions and those issues were ripe for decision before the Court. The Court rejected these arguments, largely because Google identified no excuse for failing to raise the issue earlier, and because the Board’s final decision was not unexpected in the course of the proceedings.

Practice Note: Ultimately, the Court’s opinion presents one approach (perhaps not one consistently followed) regarding what an appellant must do in order to maintain its right to review. Appellees seeking to foreclose appellate review should consider whether, regardless of the Board’s ultimate decision, the appellant appropriately pressed the arguments on the error for which it later seeks appellate review.



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Federal Circuit Will Not Second-Guess IPR Institution Denials

by | Nov 11, 2020 | ,

In a series of non-precedential orders, the US Court of Appeals for the Federal Circuit reiterated that it lacks jurisdiction to hear appeals on whether the Patent Trial and Appeal Board properly decided to deny inter partes review (IPR) petitions based on parallel district court litigation. Cisco Systems Inc. v. Ramot at Tel Aviv University, Case Nos. 20-2047, -2049 (Fed. Cir. Oct. 30, 2020); Google LLC v. Uniloc 2017 LLC, Case No. 20-2040 (Oct. 30, 2020); In re: Cisco Systems Inc., Case No. 2020-148 (Fed. Cir. Oct. 30, 2020); Apple Inc. v. Maxell, Ltd., Case No. 20-2132, -2211, -2212, -2213, 21-1033 (Fed. Cir. Oct. 30, 2020).

The 2011 Leahy-Smith America Invents Act (AIA) created various mechanisms for challenging the validity of issued patents in post-grant proceedings before the US Patent and Trademark Office PTO) by adding transitional covered business method and post-grant review proceedings to existing ex parte re-examination, and expanding and renaming inter partes re-examination to inter partes review (IPR).

Under 35 USC §§ 311, 312, a petition for IPR must identify all real parties in interest, identify and support the prior art grounds for challenges to the claims, and provide “such other information as the Director may require by regulation.” Under 35 USC § 314 and 37 CFR 42.4(a), the Board institutes a trial on behalf of the PTO Director, and a “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” In deciding whether to institute the trial, the Board considers, at a minimum, whether a petitioner has satisfied the relevant statutory institution standard. Even when a petitioner has satisfied the institution standard, the Director has statutory discretion under 35 USC 314(a) and 324(a) to deny a petition.

In 2016, the Supreme Court of the United States held in Cuozzo Speed Techs. v. Lee that “the agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” The Supreme Court also found that the Director is given broad discretion under 35 USC 315(d) and 325(d) to determine the manner in which “multiple proceedings” before the PTO involving the same patent may proceed, “including providing for stay, transfer, consolidation, or termination of any such matter or proceeding.” Subsequent PTO policies and precedential Board decisions set forth factors affecting the case-specific analysis of whether to institute an AIA proceeding, and particularly a follow-on or serial petition, or discretionary denial due to the timing of parallel district court proceedings.

In Cisco v. Ramot, the Board denied Cisco’s petitions to institute IPRs against two patents that Ramot had asserted against it in a district court case. The decisions denying Cisco’s petitions cited the Board’s discretion under 35 USC § 314(a) not to institute review and relied on the factors determining whether efficiency, fairness and the merits support the exercise of authority to deny institution in view of an earlier trial date in the parallel proceeding. Specifically, the Board [...]

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