Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about:
USPTO Director Vidal to Step Down
On November 12, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office Kathi Vidal announced her resignation effective the second week in December. According to the announcement, she will “turn the reins over to” current Deputy Director Derrick Brent.
Vidal was appointed to the position by President Joe Biden in 2021 and confirmed by the Senate in 2022. Her announcement stated that she will be returning to the private sector “and working with individuals and companies directly, committed to our same mission.” Prior to her appointment, she was a partner at Winston & Strawn, though the announcement did not specify where she will practice following her departure from the USPTO.
“Together we pointed the USPTO in a new direction focused on employees and customers,” Vidal wrote in a communication with the USPTO that she shared on LinkedIn. “We united under the mission to drive U.S. innovation, inclusive capitalism, and global competitiveness for the benefit of all Americans.” She noted that the USPTO under her leadership had updated its collective bargaining agreement and created the Office of Public Engagement.
In a news article shortly after Vidal announced her resignation, IP Watchdog noted some criticism the USPTO has received in recent years for a decrease in employee engagement. The article also stated, “During her term, Vidal issued a slew of requests for comments and proposed rules, some of which were extremely controversial. However, with her imminent resignation, the most criticized rules are unlikely to move forward now.”
DISH Asks Full Fed. Cir. Panel to Reconsider Vacating $3.9M Fee Award
Claiming that a precedential decision vacating an award of $3.9 million in attorneys’ fees goes against Supreme Court precedent, DISH Network has requested rehearing en banc by the Federal Circuit.
The case arises from a suit by Realtime Adaptive Streaming L.L.C., which alleged that DISH, Sling Media, and related companies infringed Realtime’s U.S. Patent Nos. 8,275,897; 8,867,610; and 8,934,535. In a concurrent IPR, the disputed claims of the ‘535 patent were found unpatentable as obvious. An IPR against the ‘610 patent was terminated as untimely. In cases against different alleged infringers, courts found the ‘535 patent to be invalid. In an ex parte reexamination while the DISH case was pending, the USPTO issued non-final actions rejecting a portion of the ‘610 patent as obvious.
In July 2021, the District of Colorado granted DISH’s motion for summary judgment on invalidity of the ‘610 patent, which was then the only patent remaining in the case. It subsequently awarded DISH attorneys’ fees. The court found the case to be exceptional under 35 U.S.C. § 285 based on what it called six “red flags” including the prior decisions invalidating the ‘535 patent, which the court noted bears many similarities to the ‘610 patent.
The Federal Circuit vacated the award and remanded the case to the district court in a precedential decision in August 2024. The appeals court held that the award of attorneys’ fees was an abuse of discretion because “[t]he district court relied on the six red flags without explaining the weight for each flag. Some of these red flags should not have been accorded any weight” (citation omitted).
In its request for rehearing (posted on Patently-O, which previously called the $3.9 million fee award “overzealous”) DISH argues that the Federal Circuit did not review the case according to the abuse of discretion standard of Highmark Inc. v. Allcare Health Management System, Inc., 572 U.S. 559 (2014) or consideration of the totality of the circumstances under Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014).
“The panel opinion condones a new breed of abuse-of-discretion review and totality-of-the-circumstances analysis entirely out of step with the standards established by the Supreme Court, this Court, and the regional Circuits,” argued DISH. The brief in support of the request stated that the court’s review did not comply with the deference required by the abuse of discretion standard. Further, DISH argued considering each of the red flags in isolation violated the requirement under Octane Fitness to view exceptionality in light of the totality of circumstances.
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