USPTO Withdraws CAFC Brief, Actively Considering PTAB Practice


Josh Malone, the inventor of Bunch-o-Balloons; and Telebrands Corporation, the power behind As Seen on TV,  have been fighting over Malone’s invention of one of the most popular new toys to hit the market in years. Using Malone’s innovation, it is possible to fill 100 water balloons in under 60 seconds. The invention works like a charm, and it flies off the shelves of big-box retailers like Costco.

Telebrands has lost patent infringement decisions repeatedly in federal district court to Malone’s company, Tinnus Enterprises. Telebrands has even lost at the United States Court of Appeals for the Federal Circuit. Indeed, every federal judge and every federal jury that has decided cases in this ongoing battle has ruled for Malone and Tinnus.

Telebrands has done better at the Patent Trial and Appeal Board. Notwithstanding Telebrands successes at the PTAB, recently the PTAB published final written decisions (here and here) upholding claims from two of Tinnus’ patents — U.S. Patent No. 9,242,749 and U.S. Patent No. 9,315,282 — the same patents that a federal jury found infringed and which lead to an award of $12.4 million in damages last November. These decisions represent a rare case where the PTAB agreed with a jury.

But what really ought to give Telebrands pause is the fact that they have lost the support of the USPTO at the United States Court of Appeals for the Federal Circuit.

On August 29, 2017, the United States Patent and Trademark Office filed a brief at the Federal Circuit as an Intervenor in PGR2015-00018, arguing on the side of the PGR petitioner, Telebrands. While it was disappointing to see the USPTO side with an entity that has repeatedly lost patent infringement verdicts, it was not particularly surprising given how the USPTO has since at least 2012 favored those challenging patents rather than standing behind the patents that have been issued by patent examiners.

Notwithstanding, USPTO Solicitor Nathan Kelley recently filed a motion with the Federal Circuit seeking to withdraw from the appeal in PGR2015-00018. Substantively, the motion reads:

The Director of the U.S. Patent and Trademark Office (“USPTO”) respectfully requests to withdraw as an Intervenor in this appeal and further requests that the brief filed by the Director in this appeal be withdrawn. The USPTO stands by the position that the indefiniteness approach advocated in our brief is correct in the context of examination. But because the PTAB’s approach to claim construction and indefiniteness during post-issuance proceedings under the America Invents Act is something the agency is actively considering, the Director has decided not to advocate for a particular approach in this appeal.

Director Iancu is engaging in something that might be called a listening tour, speaking with various interested parties and groups as he attempts to formulate his own strategies and anticipated rulemaking efforts. How far will Director Iancu go to reconstitute PTAB proceedings? Time will tell, but on April 11, 2018, in his first major policy speech, delivered at the U.S. Chamber of Commerce in Washington, DC, Director Iancu pledged that the U.S. patent system would not continue to head down the same path it is currently on. Welcome news for innovators who rely on the strength and certainty of a U.S. patent.


Tags: , , , ,

Leave a Reply

You share in the PLI Practice Center community, so we just ask that you keep things civil. Leave out the personal attacks. Do not use profanity, ethnic or racial slurs, or take shots at anyone's sexual orientation or religion. If you can't be nice, we reserve the right to remove your material and ban users who violate our Terms of Service.

You must be logged in to post a comment.