PTAB Strategies and Insights - August 2020

View OnlineAugust 2020 VISIT WEBSITECONTACT USSUBSCRIBEFORWARD TO A FRIENDEditor & Author:Jason D. EisenbergDirectorjasone@sternekessler.comAuthor:Sean C. FloodAssociate sflood@sternekessler.comAuthor:Trent W. MerrellAssociate tmerrell@sternekessler.comThe PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio.This month we cover:The PTAB's obligation to address the core issues indispute; andAppeals scrutinize PTAB fee and compensation structure.We welcome feedback and suggestions about this newsletter toensure we are meeting the needs and expectations of our readers.So if you have topics you wish to see explored within an issue ofthe newsletter, please reach out to me.To view our past issues, as well as other firm newsletters,please click here.Best,Jason D. EisenbergIN THIS ISSUE Federal Circuit RemandsBecause PTAB Failed ToExplain How Its DecisionAddressed the Core IssueUnder DisputeAppeals RaiseConstitutional Challengeto PTAB Fee andCompensation StructureDOWNLOADFEDERAL CIRCUIT REMANDS BECAUSEPTAB FAILED TO EXPLAIN HOW ITSAPPEALS RAISE CONSTITUTIONAL CHALLENGE TO PTAB FEE ANDCOMPENSATION STRUCTUREBy: Sean C. FloodAppellants in New Vision Gaming & Development v. SC Gaming, Inc. f/k/a Bally Gaming, Inc.[i] and Mobility Workx, LLC v. Unified Patents, LLC[ii] challenge the constitutionality of theadministrative patent judge (APJ) incentive structure, relying on a Prohibition era decision inTumey v. Ohio, 273 U.S. 510 (1927).[iii] In that case, the Court struck down an Ohio law that financially rewarded public officials whosuccessfully prosecuted Prohibition cases. In the opinion Chief Justice William Howard Taftwrote that “[e]very procedure which would offer a possible temptation to the average man as ajudge… which might lead him not to hold the balance nice, clear and true between the State andthe accused, denies the latter due process of law.”[iv]Read MoreThe information contained in this newsletter is intended to convey general information only, and shouldnot be construed as a legal opinion or as legal advice. Sterne, Kessler, Goldstein & Fox P.L.L.C. disclaimsliability for any errors or omissions, and information in this newsletter is not guaranteed to be complete,accurate, and updated. Please consult your own lawyer regarding any specific legal questions.© 2020 Sterne, Kessler, Goldstein & Fox P.L.L.C Click Here to opt-out of this communicationDECISION ADDRESSED THE CORE ISSUEUNDER DISPUTEBy: Trent W. Merrell and Jason D. EisenbergIn Alacritech, Inc. v. Intel Corp, Judge Stoll held thatunder the Administrative Procedure Act (APA) “[theFederal Circuit’s] review of a patentability determinationis confined to ‘the grounds upon which the Board actuallyrelied.’”[i] And that under the APA “the agency [has an]…obligation to develop an evidentiary basis for itsfindings.”[ii] Here, the Patent Trial and Appeal Board’s(“PTAB” or “Board”) final written decision (FWD) wasvacated and remanded because it did not “articulate asatisfactory explanation for its action including a rationalconnection between the facts found and the choicemade.”[iii] Read MoreView Online August 2020 VISIT WEBSITECONTACT USSUBSCRIBEFORWARD TO A FRIENDFEDERAL CIRCUIT REMANDS BECAUSE PTAB FAILED TO EXPLAINHOW ITS DECISION ADDRESSED THE CORE ISSUE UNDER DISPUTEBy: Trent W. Merrell and Jason D. Eisenberg In Alacritech, Inc. v. Intel Corp, Judge Stoll held that under the Administrative Procedure Act(APA) “[the Federal Circuit’s] review of a patentability determination is confined to ‘thegrounds upon which the Board actually relied.’”[i] And that under the APA “the agency [has an]… obligation to develop an evidentiary basis for its findings.”[ii] Here, the Patent Trial andAppeal Board’s (“PTAB” or “Board”) final written decision (FWD) was vacated and remandedbecause it did not “articulate a satisfactory explanation for its action including a rationalconnection between the facts found and the choice made.”[iii] Petitioner Intel Corporation, Cavium, LLC, and Dell Inc. (collectively, “Intel”) petitioned forinter partes review of certain claims of Alacritech’s U.S. Patent No. 8,131,880 (the ’880 patent).The entire case hinged on whether the prior art taught a data packet reassembly that takes placein a “network interface,” as opposed to a “central processor.” By the oral hearing stage no onedisputed the prior art taught the data packet reassembly. Yet, although this issue was crystalized in the briefing, the Board’s FWD failed to addresswhether or not the prior art taught reassembly at the network interface. Acknowledging thisfailure, Judge Stoll explained that the Federal Circuit “cannot reasonably discern whether theBoard followed a proper path in determining that the asserted prior art teaches or suggests thereassembly limitations.”[iv] And the Court held that while the FWD generally addressed theparties arguments and even “favorably” cited petitioner’s arguments and rejected...