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Sending Out an S-A-S

In my last newsletter, the Patent Trial and Appeal Board had just issued guidance explaining how the Supreme Court's April 24 ruling in SAS Institute v. Iancu will impact IPRs. Since then the board has been issuing orders and holding conference calls in individual cases, and Chief Judge David Ruschke(pictured) held a public “Chat With the Chief” Webinar on the subject Monday. I also now have the benefit of an excellent webinar presented today by three Ropes & Gray attorneys. Here are my main takeaways:

➤ The PTAB reads SAS as requiring it to review not only all claims raised in an IPR petition when instituting proceedings, but also each asserted ground of unpatentability. This makes a big difference! As Ropes' Scott McKeownpointed out, about 18 percent of pending IPRs were instituted on a subset of claims. But probably some 60 to 70 percent weren't instituted on all grounds.

➤ This may not be the PTAB's final answer. “We believe right now that SASdoes not speak clearly to all grounds,” Ruschke said. The board could narrow its interpretation in the future.

➤ PTAB Vice Chief Judge Scott Weidenfeller said that in some pending cases the board “may revisit its institution and decide to terminate.” In other words, petitioners who brought a lot of complex and extraneous claims that weren't instituted might want to dismiss them rather than risk killing their golden goose.

➤ Ropes Supreme Court practice chief Douglas Hallward-Driemeier keyed in on the court's meta communication. The justices wanted to “make clear to the PTAB that the court is watching, that they're going to be supervising what's going on there.”

➤ McKeown believes the PTO was “blindsided” by the part of the decision that suggests all grounds must be reviewed. The subject was hardly touched in briefing and didn't come up at oral argument.

➤ In the past, patent owners might have used their preliminary response to attack a handful of petitioners' claims for strategic reasons. Now, McKeown wonders, why file a patent owner's preliminary response at all? “The incentive to do that additional work for patent owners just isn't there,” he said.

➤ Hallward-Driemeier was even less enthused. “I don't see how this decision is good for anybody. It seems the [PTAB] trial is just going to be a mess.”

➤ McKeown thinks this increases the chances of legislation such as the STRONGER Patents Act finally gaining traction. SAS, he said, “will become the new boogeyman for Congress.”

Durie Tangri Loves L.A.

There's no law firm this side of Wilson Sonsini that I associate more with Silicon Valley than Durie Tangri. As the firm says in its website, “while not all of us have technical degrees, we share an aptitude for science and, in some cases, downright geekiness.” Plus their client list includes Google, Facebook, Twitter, Dropbox and Medium.

Now, as I reported Monday, Durie Tangri is making a push into Southern California. The firm just hired its second L.A. attorney—Michael Proctor from Boies Schiller Flexner—and is opening an office in the trendy arts district. Firm co-founders Daralyn Durie and Clem Roberts plan on spending half their time in Los Angeles as they aim for a 10-attorney presence.

Durie Tangri spun out of Keker & Van Nest in 2009. Durie says the L.A. move is inspired partly by the success of Hueston Hennigan, a trial-focused boutique that spun out of another super-regional, Irell & Manella.

Other motivation comes from the fallout of the Supreme Court's TC Heartland decision. Some cases would have been filed in ED-Tex a year ago are now ending up in the Central District of California, in part because a lot of technology companies have offices there, and in part because the venue is perceived as friendlier to patent owners than the Northern District of California.

As for Proctor, he says, “Trials are trials, and I am looking forward to the cross-pollination that will occur at my new home.”

Latham Loves Delaware

Latham & Watkins' IP group has been vacuuming up trial lawyers as well. The firm hired ITC trial attorney Jamie Underwood from Alston & Bird in February. On Tuesday, Tara Elliott made the move over from Wilmer Cutler Pickering Hale and Dorr.

Latham, too, appears to have one eye on TC Heartland and the surge of patent filings in the District of Delaware. Elliott clerked for U.S. District Judge Gregory Sleet and has served on the panel that recommends magistrate judges for the District of Delaware.

Of course, the firm likes Elliott's bona fides as well. She a former CIA analyst who also clerked at the Federal Circuit and serves on that court's advisory council. Latham says Elliott brings leadership skills and a first-chair track record to the role.

Apple Loves and Hates FRAND at the Same Time

Remember a few weeks ago I wrote about Qualcomm trying to withdraw its request that U.S. District Judge Gonzalo Curiel determine a FRAND rate for its LTE portfolio? Only Apple refused to consent, forcing Qualcomm to file a formal motion?

Well, now Apple has made clear that it does consent. Kind of, sort of. In an April 25 statement signed by Fish & Richardson partner Seth Sproul, Apple explains that it merely told Qualcomm “that Apple did not believe it was appropriate for Apple to take a position on the propriety of Qualcomm's asserted claims.” The company “strongly objects to Qualcomm's characterization in its motion of Apple's position regarding this court's inherent authority to set a FRAND determination.”

OK, so Apple would like for Curiel to set a FRAND royalty after all?Maybe, maybe not. “Apple has never stated or argued that it would not abide by a FRAND determination set by this court,” Sproul writes. But, on the other hand, the company “has argued” that judges don't have jurisdiction to issue a worldwide FRAND determination.

Apple's bottom line: ”The court need not address the issue in deciding Qualcomm's instant motion.”

Slicing Through the CRISPR Appeal

Last week I said I'd be keeping an eye on the Federal Circuit appeal over CRISPR gene-editing technology. I did, and it didn't go well for the University of California.

That's all from Skilled in the Art today. I'll be back Friday, and maybe then we'll make it through a full briefing without an SAS update.