Apple Inc. v. Iancu
- Edward Davila
- 5:20-cv-06128
- U.S. District Court · Northern District of California
- 11
In Apple v. Iancu, Judge Davila denied intervention and denied as moot a request to block patent-review proceedings pending new rules.
The proposed intervenors were not allowed to join Apple Inc.’s case, and their request to temporarily block Patent and Trademark Office patent trials was denied as moot. The existing plaintiffs’ challenge to the NHK-Fintiv rule was not decided by this order.
What happened
Apple Inc., Cisco Systems, Google, and Intel challenged the Patent and Trademark Office’s precedential NHK-Fintiv rule, which allows the patent board to deny certain review petitions when related court litigation is pending. Several inventors, patent owners, and US Inventor sought to join the case.
The proposed intervenors wanted to add broader claims seeking rulemaking on discretionary standards for patent reviews and an order stopping the Patent and Trademark Office from instituting such proceedings until new rules were adopted. The original parties opposed their request, arguing that the added claims would change the case and cause delay and prejudice.
The court denied intervention both as a matter of right and permissively because the proposed claims were outside the scope of the existing case and could be pursued separately. Judge Davila also denied as moot the proposed intervenors’ request for a temporary restraining order and preliminary injunction.
The detailed version
- Apple Inc. v. Iancu · No. 5:20-cv-06128
- Edward Davila
- Feb. 5, 2021
Background
Apple Inc., Cisco Systems, Inc., Google LLC, and Intel Corporation challenged the Patent and Trademark Office’s designation of the NHK-Fintiv rule as precedential. That rule allows the Patent Trial and Appeal Board to decline to institute an inter partes review—a process for challenging the validity of an issued patent—based on factors related to parallel patent litigation in district court. The plaintiffs alleged that the rule conflicts with the America Invents Act, is arbitrary and capricious, and was adopted without required notice-and-comment rulemaking under the Act and the Administrative Procedure Act.
US Inventor, 360 Heros, Inc., Larry Golden, World Source Enterprises, LLC, Dareltech LLC, Tinnus Enterprises, Clearplay, Inc., and E-Watch, Inc. moved to intervene, meaning to become parties in the existing case. They sought to add claims asserting that the Patent and Trademark Office had unlawfully failed to adopt rules establishing discretionary factors for inter partes review and other post-grant proceedings. They also sought an order requiring rulemaking and an injunction preventing the agency from instituting any America Invents Act patent trial until that rulemaking was complete. Apple, Cisco, Google, Intel, and Andrei Iancu opposed intervention.
Intervention as of Right
Federal Rule of Civil Procedure 24(a)(2) permits intervention as of right when the motion is timely, the applicant has a legally protectable interest related to the case, resolving the case could impair that interest, and existing parties do not adequately represent it. The court found the motion timely, but concluded that the proposed intervenors did not meet the requirements concerning a significant protectable interest and impairment of that interest.
The court explained that the existing case concerns the lawfulness of one precedential rule governing discretionary denials of inter partes review. The proposed intervenors instead sought to add a broader challenge concerning discretionary factors for both inter partes review and post-grant review, along with broader requested relief. In the court’s view, those additions would inject new and unrelated issues and substantially change the case. The court also concluded that the proposed intervenors could protect their interests through separate litigation or a petition for rulemaking to the Patent and Trademark Office. The court therefore denied intervention as of right and did not address whether the existing parties adequately represented the proposed intervenors’ interests.
Permissive Intervention
Rule 24(b) allows permissive intervention when the proposed intervenor has a claim or defense sharing a common question of law or fact with the existing case, but the court retains discretion to deny the request. The court found that adding the proposed intervenors’ claims would unduly delay and prejudice the original parties by requiring consideration of additional legal and factual issues. It also noted that the proposed intervenors could pursue their claims through a separate action. The court therefore denied permissive intervention.
Temporary Restraining Order and Preliminary Injunction
US Inventor and World Source Enterprises also sought a temporary restraining order and a preliminary injunction blocking the Patent and Trademark Office from instituting America Invents Act trials until the agency adopted new rules. Because the court denied intervention as of right and declined permissive intervention, it denied the temporary restraining-order application and preliminary-injunction motion as moot.
Disposition
The court denied the motion to intervene. It further ordered that the proposed intervenors’ application for a temporary restraining order and motion for entry of a preliminary injunction were denied as moot.
Read the full 11-page opinion on CourtListener, the free public archive maintained by the Free Law Project.