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« Electronic Scripting Products, Inc. v. HTC America, Inc. (N.D. Cal. 2018) | Main | Putting on Your Best Face: Expanded PTAB Panels in IPRs and Other PTO Proceedings »

March 28, 2018


Translation of the CAFC's order: PTAB, now that you've had fun playing "judge", go back to your sandbox and wait until the real judges decide how this one should proceed.

Well, you learn something every day. I did not realize (although I am glad to know it now) that the very act of lodging an appeal in the circuit courts immediately divests the lower tribunal of jurisdiction. I would have thought that the lower tribunal retains jurisdiction until the appeal is docketed, or some such.

In any event, the cited authorities could not be any more clear. The PTAB really has *no* remaining authority in this case, unless and until the CAFC remands it back to them. They really do *have* to bring this particular IPR to a halt.

Incidentally, the way that I read §316(a)(11), there really is no discretion for the PTAB to extend the 18 month hard limit. That is to say, now that the PTAB has instituted, the 18 month time limit is chugging along and the CAFC's interlocutory appeal does not toll that limit. Even if the CAFC holds against the tribe here, if the remand does not come in time for the PTAB to reach a final decision within the 18 month limit, then there is no alternative under this statute but a victory for the patentee.

Dear Greg:

That 18-month limit is likely the basis for the expedited briefing schedule by the Federal Circuit but I haven't done the math regarding the deadline date for a decision against the tribe to leave time for the PTAB to decide. I suspect that they won't need much time, because 1) they can schedule the final hearing to occur almost immediately (within 1-2 days) of the remand (Petitioners won't complain and the Tribe will have little basis except maybe a cert petition); and 2) I'm sure the PTAB has its opinion already written.

And it certainly sounds like the court will telegraph its opinion by whether it lefts the stay or not. If it doesn't then there is a reasonable chance they will rule against the PTO; if they lift the stay then they will likely rule against the tribe

This is a consolidated appeal from several IPRs, so there are different dates at issue here. Consider, however, that (e.g.) IPR2016-01127 was instituted on 8 Dec 2016. That means that the one year date has already passed, and even if the Director gives a justification for extending the deadline out to the 18 month hard limit (an easy enough justification to make here), that still means a hard limit of 8 June 2018. The CAFC is talking about holding oral arguments in the first week of June 2018. That does not seem to me to leave enough time for the PTAB to meet its statutory deadline, so at least *some* of these challenges are going to fail for timing alone.

Even the latest of the IPRs (i.e. IPR2017-00601) was instituted on 31 Mar 2017. That means that the hard limit arrives on 30 Sept 2018. As I said, the CAFC is holding oral arguments the first week of June. It is scarcely unusual for the CAFC to take a couple months to announce a decision, especially on an important case. This one quite likely to see a cert petition regardless of who wins, so I cannot imagine them rushing it merely to serve the PTAB's convenience.

It is not crazy to imagine that the timing here might well preclude a final written decision on any of these cases.

Dr. Noonan,

Given the plethora of IPR's and patents (potentially) involved, I can at least find the institution decision date for patent 8629111, IPR216-01128:

December 8, 2016

Which makes the 18 month date: June 8, 2016.

Seeing as the order only indicates the "month" of June (and I do not see a day of that month indicated), At least one IPR MAY expire prior to the actual oral hearing.

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