The Strengthening of the "Albright Doctrine" re IPRs at the PTAB

The "Albright Doctrine"
First, to be clear, the naming of the "Albright Doctrine" is mine, and hopefully no one (especially Judge Albright or the WDTX) takes offense.  What I am calling the Albright Doctrine is simply the idea that a federal court can get to trial more quickly than the PTAB can both institute and and adjudicate an inter partes review.  Judge Albright has been outspoken about this issue, saying specifically that "[i]t's my job to give people the opportunity to have their cases tried in a federal court ... and I probably can get a patent trial resolved more quickly than the PTAB can." 

Patent cases in Waco have been moving MUCH more quickly than in courts in Delaware and California.  For example, most claim construction hearings in Waco have taken place between 8 and 12 months from case filing according to data obtained from Lex Machina.  Even more important than a quickly moving docket, though, is that Judge Albright has does not generally stay litigation due to an IPR request or institution.  When asked recently by IAM why this is, here is how the Judge replied:

https://www.iam-media.com/law-policy/albright-the-last-thing-anyone-should-think-about-venue-it-plaintiff-friendly

In allowing patent owners their day in court in a timely manner, Judge Albright has single-handedly changed the tenor of patent litigation and provided a fair and reasonable jurisdiction for patent disputes.  Now, the PTAB is jumping on board!

As indicated below, the PTAB has basically stated that if the invalidity challenges are the same in the IPR request and parallel patent litigation, then if a court has a reasonable chance of adjudicating the issue first, the Board will use its discretion and not even institute a review.  In essence, the PTAB is saying, "yes, we believe that courts can move more quickly than we can, and if the issues are the same, then any IPR would be moot and should not be instituted." 

This is what I call the Albright Doctrine:  that a district court can moot an IPR by moving quickly to trial so that a jury can adjudicate validity rather than the PTAB.  I am a fan, because I agree with Judge Albright that juries are wise and will make the correct decisions through the longstanding U.S. trial system if allowed to do so.    I am sure that infringers and those that do not respect patents would disagree.
​
Board Rejects Institution of IPR of FinTiv Patent
Last Wednesday, May 13, the PTAB denied institution of an IPR of Fintiv Inc.'s Patent No. 8,843,125.  Apple had requested institution while Fintiv asserted that the PTAB should deny institution because Apple had raised the same invalidity challenges in the district court proceeding, which should be resolved before the PTAB reached its final decision. 

The PTAB in its previous March 20 order regarding the same matter identified six factors for determining whether to institute the IPR under 35 U.S.C. § 314(a):​

After reviewing the parties' briefs as to whether the Board should use its discretion to deny Apple's petition based on the board's precedential NHK Spring decision, the PTAB declined to institute review. 

In NHK, the PTAB refused to institute an IPR when a trial was set to take place before the Board was expected to issue a final written decision, after analyzing factors six non-exclusive factors:

1. - the similarities and material differences between the asserted art and the prior art involved during examination;
2. - the cumulative nature of the asserted art and the prior art evaluated during examination; 
3. - the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
4. - the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
5. - whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and
6. - the extent to which additional evidence and facts presented in the Petition warrant reconsideration of prior art or arguments.” Citing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017) (informative).

Six Factors Made Precedential
The Panel in its March 20 order made the six factors precedential, building on its NHK Spring decision and requiring future panels to analyze these factors when determining whether to exercise discretion to refuse review of a challenged patent on the ground that an upcoming district court trial will address the patent's validity.

Specifically, in its May 13 decision denying institution, the Board found that five of the six factors weighed in favor of denying Apple Inc.'s IPR bid, including the upcoming trial date of March 8, 2021 (postponed from November 16, 2020 due to COVID-19 pandemic) in the parallel litigation in the Western District of Texas (case no. 1:19-cv-01238-ADA).  

Other factors that supported denial of institution of IPR included:

• the petitioner and the defendant in the parallel proceeding are the same party;
• there was significant investment by the court and parties in the Texas federal court litigation (Apple had argued that only two depositions had been taken, and only substantial investment regarded claim construction, which was fully complete.  The Court admitted that "fact discovery is in its early stages, with document production ongoing and depositions just getting underway, expert reports are not yet due, and substantive motion practice is yet to come" but still found that "[b]ased on the level of investment and effort already expended on claim construction and invalidity contentions in the District Court, this factor weighs somewhat in favor of discretionary denial in this case";
• the same claims were challenged based on the same prior art in both the Petition and in the District Court; and
• Apple's arguments appeared to have weaknesses.​

This PTAB decision makes the most sense of any I have seen in some time. I hope other courts around the country will adopt Judge Albright's policy of not staying cases and moving cases quickly to trial.  Only time will tell, but right now, the PTAB just gave Judge Albright a vote of confidence.