Nonprofit trade association US Inventor and a group of small businesses cannot intervene in a lawsuit that Apple Inc, Cisco Systems Inc, Google LLC, and Intel Corp filed last year against the U.S. Patent and Trademark Office, a federal judge in California has ruled.
Like the Big Tech companies, the would-be intervenors question the lawfulness of the USPTO’s “NHK-Fintiv” rule – a list of factors the agency has decided are relevant when considering whether to review the validity of a patent that is also being litigated in court.
However, the tech giants only seek to block the use of the NHK-Fintiv factors. US Inventor’s motion seeks to compel the USPTO to adopt standards via formal regulation – and to shut down the agency’s review of existing patents until the regulatory process is completed, Friday’s ruling by U.S. District Judge Edward Davila said.
Apple and the other tech companies “defined the general scope of the suit and the Proposed Intervenors cannot now by intervention radically alter that scope to create a much different case,” Davila wrote.
Google attorney Daniel Shvodian of Perkins Coie declined to comment on Monday. Apple, Cisco and Intel are represented by attorneys at Wilmer Cutler Pickering Hale and Dorr, who did not immediately respond to requests for comment.
The proposed intervenors’ attorneys at Flachsbart & Greenspoon and Hudnell Law Group also had no immediate response.
The tech companies sued then-USPTO Director Andrei Iancu in federal court in San Jose last August, after the agency’s Patent Trial and Appeal Board (PTAB) declared its 2018 decision in NHK and its March decision in Fintiv to be precedential.
In NHK, the PTAB decided it was inefficient to institute an inter partes review (IPR) when trial was imminent in a parallel patent-infringement case in federal court.
In Fintiv, the PTAB spelled out six litigation-related factors it would consider when deciding whether to institute IPR.
Apple and the other tech companies argue that the litigation-related factors are not authorized by the America Invents Act of 2011, which created the IPR process, and that the new rule creates “unjustifiable and unpredictable disparities among similarly-situated IPR petitioners.” The complaint also alleges that the rule is “procedurally invalid.”
US Inventor – joined by 360 Heros, Larry Golden, World Source Enterprises, Dareltech, Tinnus Enterprises, Clearplay and E-Watch – filed a motion to intervene in the suit in September. They do not oppose the NHK-Fintiv factors, but argue that the USPTO should adopt standards via a formal rulemaking process after publication and a comment period.
The USPTO published a request for comments in October, as a result of an August petition by US Inventor. In addition to its motion to intervene, US Inventor sought a restraining order and injunction to block the USPTO from “granting institution in any AIA patent trial” until the rulemaking process is finished.
Those collateral issues would “unduly delay and prejudice the adjudication of the original parties’ case,” Davila held.
On Feb. 12, the U.S. Court of Appeals for the Federal Circuit is scheduled to hear an unrelated challenge to the NHK-Fintiv rule. In that case, Viatris Inc (formerly Mylan Pharmaceuticals) claims the rule was unconstitutionally applied to its petition for review of a Janssen Pharmaceutica patent.
The case before Davila is Apple Inc et al v. Director of the U.S. Patent and Trademark Office; US Inventor et al, proposed interventors; U.S. District Court for the Northern District of California, No. 20-6128.
For Apple, Cisco and Intel: Mark Selwyn, Alyson Zureick and Catherine Carroll of Wilmer Cutler Pickering Hale and Dorr
For Google: Daniel Shvodian and Andrew Dufresne of Perkins Coie
For the USPTO: Gary Feldon, U.S. Justice Department For US Inventor et al.: Robert Greenspoon of Flachsbart and Greenspoon; Lewis Hudnell III of Hudnell Law Group