USPTO Building

COVID-19 and the Patent Trial and Appeal Board have just taken a bite out of the rocket dockets in patent-heavy judicial districts.

The PTAB ruled Tuesday that delays in jury trial scheduling might make the board less likely to defer to parallel district court proceedings on the validity of patents. The PTAB's administrative trials don't involve juries, and the administrative patent judges often appear by video feed. "Even in the extraordinary circumstances under which the entire country is currently operating because of the COVID-19 pandemic, the Board continues to be fully operational," Administrative Patent Judge Ryan Flax noted for a unanimous panel in Sand Revolution II v. Continental Inter-Modal Group—Trucking.

The upshot is that the PTAB is instituting inter partes review proceedings on Continental's 8,944,740 patent on fracking material, even noting that Sand Revolution's preliminary case for invalidity is "strong on most challenged claims."

That's a full about-face from four months ago, when the mostly same panel declined to review Continental's patent largely on the procedural ground that the parties' district court case was scheduled for trial before U.S. District Judge Alan Albright of the Western District of Texas in July. That meant it would have been over a good six months before the PTAB could have completed its review.

Backed by Paul Hastings, Lee & Hayes and Clayton, McKay & Bailey, Sand Revolution asked the PTAB's Precedential Opinion Panel to review the case and rule that the inherent unpredictability of trial schedules makes them an inappropriate factor for reviewing an otherwise meritorious IPR challenge.

The POP panel declined, but the original panel that issued the February decision granted rehearing, with Vice Chief APJ Scott Weidenfeller taking the place of APJ Carl DeFranco. Now that Albright has postponed the trial from July to September to November to "February 8, 2021 (or as available)," the PTAB has decided to move forward.

"The district court's express inclusion of the qualifier 'or as available' for each calendared trial date of its evolving schedule … indicates a continuing degree of recognized uncertainty of the court's schedule by the court," Flax wrote.

Of course, Albright is far from the only judge who's been forced to reschedule jury trials during the pandemic. But he presides over one of the fastest-growing and fastest-moving patent infringement dockets in the country. He has said that he's not trying to take away anyone's right to go to the PTAB, but that he believes patent owners should be entitled to a jury trial.

The PTAB ruled in 2018′s NHK Spring v. Intri-Plex Technologies that if the same invalidity arguments are at play in a district court case that's nearing trial, it may be more efficient for the board to exercise its discretion not to launch IPR proceedings. The board designated NHK Spring precedential last year, fleshing that out further with Apple v. Fintiv, which was designated precedential in May.

"No permanent trial date exists in any district court litigation—trial dates are constantly in flux," Sand Revolution had argued in a supplemental brief filed in April. "The pandemic unfolding across the country all but guarantees further extensions to come."

Continental, represented by Lathrop Gage, argued that because of the litigation over rehearing, it's now unlikely that the PTAB will issue a final written decision until April or May 2021—long after the scheduled trial in the Western District action.

Lee & Hayes partner James Stein and Paul Hastings partner Naveen Modi and associate Chetan Bansal submitted Sand Revolution's request for rehearing. Stein and Clayton McKay partner Armon Shahdadi contributed supplemental briefing for Sand Revolution.