Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 13
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Recent Refusals To Institute
· Other Matters of Interest at the PTAB
· PTAB Trial Section Judges
As of the end of October, the PTAB has instituted, and trial is ongoing in, 222 of the 677 listed proceedings; 391 petitions await decision. Twenty six proceedings have been terminated by settlement.
Recent Refusals to Institute
The PTAB has refused to institute 36 proceedings, the 7 most recent denials occurring in October.
Failed Attempt at Joinder
In Apple v. Benjamin Filmalter Grobler, IPR2014-00060 and 00061, the Board made clear that a petitioner cannot rely upon the actions of other third party petitioner’s with the hope that such third parties will continue to pursue the IPR (and not settle). The Board denied a series of motions filed by Apple which would have, if granted, resulted in Apple reviving a settled and dismissed IPR2013-00076 (involving Sony as petitioner) and then being joined to the IPR. On March 27, 2012, patent owner filed complaints against Apple and Sony alleging infringement of the patent in suit. Sony timely filed IPR2013-76 and a trial was instituted on July 22, 2013. Sony and patent owner thereafter reached a settlement and, on October 7, 2013, the Board granted the joint motion to terminate the IPR.
The Board refused to institute Apple’s IPR petition because it was filed over one year after patent owner served the complaint on Apple. The Board then denied Apple’s petition to reconsider the Board’s entry of judgment and dismissal of the Sony IPR because Apple failed to file its motion to join the Sony proceeding within one month of the Board instituting trial in the Sony IPR. The Board noted that Apple intentionally elected not to file its own IPR or participate in the Sony IPR because Sony was pursuing the invalidity. Apple relied on third party Sony’s pursuit of the IPR at its own peril, as the Board concluded that Apple’s “disappointment with Sony’s decision to settle IPR2013-00076 does not establish that the interest of justice require the Board to authorize Apple to file a motion to revive a proceeding it deliberately chose to avoid, so that Apple can join the revived proceeding and purse the action in Sony’s stead.”
Secondary Considerations Evaluated in Earlier Ex Parte Reexam
In Omron Oilfield & Marine, Inc. v. MD/Totco, IPR2013-00265, the Board declined to institute the IPR because the Petition failed to demonstrate a reasonable likelihood that it would prevail with respect to at least one claim based on evidence of secondary considerations which were presented in an earlier ex parte reexamination proceeding. The patent, which is expired, is directed to an automatic drilling system. The Board noted that its review of claims of an expired patent is similar to that of a district court’s review, as opposed to the “broadest reasonable” interpretation. Based on the claim constructions, the Board determined that the petitioner did not meet the statutory standard. In so doing, the Board noted that the Patent Owner had argued that the IPR should not be instituted because an ex parte reexamination certificate had been issued over the identical prior art and substantially the same arguments. The Board disagreed with Patent Owner’s argument, but agreed with the prior examiner’s findings and supporting evidence, and further agreed that the patent owner’s evidence of secondary considerations is persuasive. The Board noted that the petitioner did not challenge the merits of Paten Owner’s secondary consideration evidence but only argued that the Patent Owner’s evidence would be unable to overcome the strong showing of obviousness.
Counterclaim Under 35 U.S.C. § 315(b)
In St. Jude Medical v. Volcano Corp., IPR2013-00258, the Board denied institution on October 16, 2013, making clear that a counterclaim alleging infringement is “a complaint alleging infringement of the patent” within the meaning of 35 U.S.C. § 315(b) and, thus, the counterclaim starts the one year statute of limitations running to file the IPR. St. Jude filed the petition for IPR on April 30, 2013, which was more than one year after Volcano served St. Jude with a counterclaim alleging infringement of the patent at issue. In this case, St. Jude had sued Volcano on other patents in district court and Volcano counter-claimed against St. Jude with the patent-at issue in the IPR. The counterclaims were filed and served on September 20, 2010 and the present petition was not filed until April 30, 2013. The Board relied, in part, on the similarities between a complaint and a counterclaim as it applies to patent infringement.
Claim Construction in Expired Patent; Obviousness Type Double Patenting Ineligible Basis For CBM
On October 8, 2013, the Board declined to institute two Covered Business Method Reviews filed by Apple against Sightsound Technologies. The first, CBM2013-00019, involves USP 5,191,573 and the Board noted that review of the ‘573 patent is being instituted in CBM2013-00020. The second, CBM 2013-00021, involves USP 5,966,440 and the Board noted that review of the ‘440 patent is being instituted in CBM2013-00023.
In CBM2013-00019, the Board concluded that the petition did not meet the threshold recited in 35 U.S.C. § 324(a), that the claims were, more likely than not, unpatentable. Petitioner challenged certain claims as unpatentable under 35 U.S.C. § 101 and § 112. The involved patent had expired and the Board noted that it would construe the claims in a manner similar to that used in a district court and not the “broadest reasonable” interpretation. The Board adopted the Petitioner’s proposed claim interpretations, after reviewing the District Court’s claim interpretations to ensure consistency and noting that the patent owner did not dispute the proposed constructions. The Board determined that the involved patent is a covered business method patent because it meets the “financial product or service” component of the definition in Section 18(d)(1) of the AIA. However, the Board declined to institute the CBM because it was not persuaded that the claims are directed to patent-ineligible subject matter under 35 USC 101 and further was not persuaded that the claims laced adequate written description support under 35 USC 112.
In the second petition (CBM2013-00021), the Board again adopted the petitioner’s proposed claim constructions and found the patent to be covered business method patent. However, the petitioner did not persuade the Board that the patent was directed to ineligible subject matter and the Board also concluded that obviousness type double patenting is not a permissible ground for challenging claims in a covered business method review because this is a judicially created doctrine. The fact that it was based on the language of 35 USC 101 does not suffice to include the doctrine within the statute.
Other Matters of Interest at the PTAB
In CBM2013-00020 the PTAB instituted review of an expired patent, concluding that Petitioner Apple made the threshold showing of unpatentability according to 35 U.S.C. §§ 102 and 103. As noted above, the PTAB declined to institute CBM2013-00019 of the same patent concluding that the standard had not been met.
In both decisions, the PTAB recognized that the patent at issue had expired and indicated, consistent with reexamination proceedings as articulated in MPEP §2258 I (G), that the construction of claim terms of expired patents differs from that of unexpired patents.
Specifically, claims terms of unexpired patents receive their “broadest reasonable construction in light of the specification of the patent in which [they] appear,” (37 C.F.R. § 42.300(b)). The claim terms of expired patents would be construed by the Board in CBM proceedings as they are in district court proceedings – namely, they are given their “ordinary and customary meaning as would be understood by a person of ordinary skill in the art at the time of the invention and in the context of the entire patent disclosure.”
This issue was not explicitly addressed by the rules and so this decision, together with Omron Oilfield & Marine, Inc. v. MD/Totco, IPR2013-00265 (also discussed above) answers the question in the affirmative that the Board will continue to examine expired patents and also will continue to apply the different claim construction standards.
PTAB Agrees To Revisit Question of § 315(b) Bar Based On New Evidence
In Amkor Technology, Inc. v. Tesseta, Inc., IPR2013-00242, Paper No. 53, entered October 30, 2013, the panel (JJ. Turner, Arbes and DeFranco), in response to the Patent Owner’s continued arguments that the petitioner is barred from seeking IPR under 35 U.S.C. § 315(b), authorized Patent Owner to file a motion to terminate the IPR in light of new evidence. The Board reasoned that “resolving the issue of the applicability or inapplicability of Section 315(b) early in this proceeding is appropriate in the interest of efficiency.” Petitioner was also authorized to file an opposition. The Parties were directed to address all Section 315(b) issues, including whether the November 2, 2009 document is a “complaint” within the meaning of Section 315(b), and whether the document is a “complaint alleging infringement of the patent” at issue in this proceeding, and whether Petitioner was “served” with the document.
Petitioner Withdraws Request for Oral Hearing Following Conference Call
In Motorola Mobility LLC v. Arnouse Digital Devices Corp.,IPR2013-00010, Paper No. 43, entered October 30, 2013, APJ Tierney ordered that no oral hearing be held and that the case be decided on the briefs, following the patent owner’s plea during a conference call that an oral hearing would place an undue financial burden on the patent owner, a small business, and the petitioner’s subsequent agreement to drop the request. The Board noted the possibility of conducting the hearing telephonically.
Pro Hac Vice Decision In Inter Partes Reexamination
In Zimmer Inc. v. Howmedica Osteonics Corp., Inter Partes Reexamination 95/000,428, on appeal to the Board in Appeal 2013-007710, the Chief Judge, acting through his delegate Judge Robertson, denied requester’s (Zimmer’s) petition to be represented at the oral hearing by a representative appearing pro hac vice. Per the decision, entered October 18, 2013, following complete briefing of the appeal:
Despite petitioner's assertions, petitioner has failed to provide a showing that there is good cause for the Board to recognize counsel pro hac vice in this inter partes reexamination. While the petition states that the litigation involves the issues of claim construction and invalidity (id.), there is insufficient explanation of any specific interrelatedness of this proceeding and the district court litigation, other than that they involve the same patent. Also, the standards of review of a patent before the USPTO and the district court are quite different. Although requesters may benefit from Mr. Callahan's expertise in the prosecution histories of this patent family and the associated prior art, requesters are already represented by patent counsel registered to practice before the USPTO, and inter partes reexamination proceedings are conducted based upon the rules set forth in Part 41 of Title 37 of the Code of Federal Regulations, which limits oral argument to the written record.
Recent Challenges To AIA
On October 15, 2013, Dominion Dealer Solutions, LLC filed a complaint in the U.S. District Court for the Eastern District of Virginia (Norfolk Division) against the Patent Office, challenging the Office’s refusal to grant a series of inter partes review petitions, namely IPR2013-00220, -00222, -00223, -00224 and -00225, filed in March 2013 and denied institution in August 2013.
Dominion argues that it presented sufficient evidence to meet the standard for instituting an inter partes review trial under 35 U.S.C. § 314(a), and that the Office failed to accept the unrebutted evidence and “improperly substituted its own assumed expertise and views for undisputed evidence.” Dominion claims that the PTAB’s denials are arbitrary and capricious and contrary to law under 5 U.S.C. § 706(2)(A).
Recently, the Virginia Court dismissed a case that challenged the Board’s decision to institute review of a “covered business method” patent, stating that the Court “lacks subject matter jurisdiction” because the “AIA expressly precludes judicial review of the decision to institute post-grant review proceedings.” Versata Development Corp., v. Teresa Stanek Rea and SAP America, Civil Action No. 1:13-cv-00328-GBL-IDD, August 7, 2013 Decision at page 9. While this action involved the decision to institute a CBM proceeding, the Court’s reasoning is broad enough to encompass an IPR, as well as the decision not to institute a post-grant review proceeding.
Recent Federal Circuit Decisions on Appeals from PTAB
In re Biedermann, Appeal 2013-1080, decided October 18, 2013 (Fed. Cir. 2013) demonstrates the ease with which a Board decision may cross the line from amplifying the examiner’s fact findings to stating a new ground of rejection, warranting further opportunity to respond. The Court captured the problem in the following passage:
Here, the examiner’s reasoning in support of combining the square thread of Steinbock with the device of Cotrel was that there were a limited number of threads that could be used and that a square thread was the most efficient. While the examiner in the Examiner’s Answer made a passing reference to splaying in relation to the gaps between the inner and outer threads, the examiner’s rejection neither relied upon nor even noted the avoidance of splaying as a factor. The Board, on the other hand, found new facts as the basis for concluding that the combination of Cotrel and Steinbock would have been obvious: that Cotrel teaches avoiding splaying with saw-tooth threads; that saw-tooth threads are buttress threads; that Steinbock groups together the square threads and buttress threads; and that square threads avoid splaying. The principal reason the examiner combined the references was the efficiency of a square thread. The principal reason the Board affirmed the combination of the references was the avoidance of splaying by using square threads. These are different grounds and form the bases or underpinnings of different rejections.
A case which may create tension within the PTAB in the aftermath of Biedermann is the court’s decision in Randall Mfg. v. Rea and FG Products, Inc., Appeal No 2012-1611, decided October 30, 2013 (Fed. Cir. 2013). There, a Board panel confined itself to evaluating the examiner’s § 103 rejection in an inter partes reexamination based on the evidence relied upon by the examiner and found itself criticized by the court for not going beyond that evidence. The Court cited KSR, pointing out that the Supreme Court “criticized a rigid approach to determining obviousness” based only on the prior art disclosures “with little recourse to the knowledge, creativity, and common sense” of the skilled artisan. The court found that the Board narrowly focused on only the four prior-art references cited by the Examiner, “ignoring the additional record evidence” cited to show the knowledge and perspective of one of ordinary skill in the art. Thus, the Board did not take into account information that would have shown motivation to combine or modify references to arrive at the claimed invention. In this case, the court found the Board’s failure prejudicial and the Board concluded that the claimed invention would have been obvious.
In Sanofi-Aventis v. Pfizer, Inc., Appeal 2013-1345, decided November 5, 2013 (Fed. Cir. 2013), the court upheld the Board’s decision awarding priority to Pfizer in an interference with Sanofi-Aventis over who was first to invent isolated protein IL-13bc. While Pfizer was first to have the protein in hand, it had only correctly identified 1135 of the 1143 nucleotides prior to the Sanofi-Aventis date of invention. Per the Court,
Discussing the consequences of Pfizer’s flawed sequence analysis that was corrected after the Sanofi priority date, the Board stated that “[f]or proteins and polynucleotide species, a sequence is the gold standard for identifying species with precision . . . . It does not, however, thereby follow that a sequence is the only way to identify the composition precisely.” Bd. Op. at 15. Upon selecting, isolating and characterizing clone 11 Pfizer was “able to define [the IL-13bc] so as to distinguish it from other materials, and to define how to obtain it.” . . . The Board’s findings are supported by substantial evidence.
On these findings, the Board held that Pfizer had conceived and reduced to practice the isolated polynucleotide of Count 3 before the Sanofi benefit date. We conclude that the Board applied the correct law. The award of priority to Pfizer is affirmed.
PTAB Trial Section Judges
Recent opinions by the PTAB have revealed additional names of judges involved in AIA proceedings. These include Judges Miriam L. Quinn, Grace Obermann, Mitchell G. Weatherley, Carl M. DeFranco and Kalyan K. Deshpande. Docket assignments continue to show a heavy load of cases assigned to several experienced inter partes APJs, as reflected in the list below drawn from the spreadsheet, but with increasing numbers being assigned to more recently appointed Board members.. These numbers do not reflect decreases as a result of terminations or assignment of proceedings to another APJ for authoring an opinion.