Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 20
In This Issue
· Ongoing Tally of Filed IPR and CBM Petitions
· Recent Developments In The Law
PTAB Permits Sanctions Motion To Move Forward
CAFC Affirms PTAB Claim Construction Standard
CAFC Provides Guidance For Motions To Stay In View Of AIA Petitions
Or Jill M. Browning
Ongoing Tally of Filed IPR and CBM Petitions
Since September 16, 2012, over 3,255 petitions for inter partes review (“IPR petitions”) have been filed, as well as 366 petitions directed to covered business methods (“CBM petitions”), and 11 petitions utilizing the post grant review process (“PGR petitions”).
During July, 2015, there were 96 petitions for IPR filed and 3 petitions for CBM. As has become typical, there were multiple filers again in July. Of the 96 IPR petitions filed in July, the following each filed 6 IPR’s: Finjan, Inc, Andrea Electronics Corporation and Telefonaktiebolaget LM Ericsson. The following entities each filed 4 IPR petitions: Bandspeed, Inc., Cubist Pharmaceuticals and Inc., Helsinn Healthcare SA and Roche Palo Alto, Knauf Insulation LLC and Knauf Insulation SPRL.
Recent Developments In The Law
Coalition For Affordable Drugs VI, LLC v. Celgene Corporation : (IPR2015 – 01092 (Patent 6,045,501); IPR2015 – 01103 (Patent 6,315,720); and IPR2015-01102 (Patent 6,315,720) and IPR2015-01096 (Patent 6,315,720):
By order dated June 9, 2015, the PTAB permitted Celgene to file a motion for sanctions against Coalition for Affordable Drugs VI, LLC or the real parties-in-interest (hereinafter collectively “RPI”), alleging that their petitions represent an abuse of the IPR process. The motion is directed against the party, as opposed to counsel for the party.
Pursuant to 35 USC §316(a)(6) and 37 C.F.R §42.12(a)(6), b(8), the patent owner Celgene Corporation moved for dismissal of the IPR Petitions as a sanction for abuse of process by the RPI. Celgene is convinced that RPI is using the post grant proceedings against his ‘501 and ‘720 patents to illegally provide hedge funds with a vehicle to profit.
Celgene argues that RPI’s sole purpose “is not to create, or even to compete, but to file IPRs in an effort to move markets and to reap profits from their investments” by affecting public company’s stock price and harming the investing public. Celgene argues that the petitioner in this case is neither a competitor of Celgene’s nor an organization seeking to invalidate its patent for competitive interest or to make technology available to the public. According to Celgene, the petitioner’s sole motive is to move stock market pricing and maximize profits for investors.
Celgene argues that the IPRs were not intended to be used for such an abusive litigation tactic, citing Neumann v. Vidal, 710 F2d 856, 860 (DC Cir 1983), in support of its argument that petitioner’s filings amount to an abuse of process.
The petitioner is permitted to respond to this motion by August 11, 2015.
CAFC Affirms PTAB’s Claim Construction Standard
In re Cuozzo Speed Technologies, LLC (CACF): July 8, 2015
The CAFC affirmed the PTAB’s claim construction standard (the broadest reasonable interpretation). The Court reasoned that the PTO has a long history of applying this standard to unexpired patents and, thus, Congress “implicitly approved” this standard when enacting the AIA. The Court further reasoned that, even if Congress did not approve, the standard was properly adopted by the USPTO according to title 35 U.S.C. §316 which provides PTO provides authority to the PTO to make regulations and citing Chevron, U.S.A. v. Natural Res. Def. Council, Inc.,467 U.S. 837, 842 (1984).
Microsoft Corp. v. Proxyconn_Inc. ( Fed Cir 2015)
While the CAFC continued to affirm the “broadest reasonable interpretation” standard adopted by PTO regulation, as noted above in In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015), the CAFC emphasized the importance of reading the claims consistent with the specification.
In this case, the CAFC concluded that the Board’s construction was so broad as to be unreasonable under general claim construction principles, citing In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fec. Cir. 2010). The CAFC instructed the PTO to take into account the prosecution history and cautioned the PTO against adopting constructions that were divorced from the specification and record evidence.
CAFC Provides Guidance For Motions To Stay
Smartflash v. Apple; Smartflash v. Samsung (CAFC): July 30, 2015
Smartflash filed infringement suits against Apple and Samsung. Roughly one year after the lawsuit was initiated, Apple filed multiple CBM petitions with the PTAB regarding the 6 Patents-in-suit in April and March, 2014. After filing the CBM petitions, Apple filed motion to stay, which Samsung joined, the district court proceedings, pending CBM review. The district court denied the motion without prejudice because the PTAB had not yet decided whether to initiate the CBM proceeding. Samsung filed 10 CBM petitions in September, 2014, but did not renew a request for stay. The district court cases proceeded towards trial. Apple’s trial occurred in February, resulting in a verdict in favor of Smartflash. Samsung’s trial date was postponed until after the conclusion of Apple’s trial. In March/April, 2015, the PTAB instituted CBM review many of the CBM petitions filed by Apple and Samsung. Samsung thereafter filed a renewed motion to stay the proceedings, and shortly thereafter, Apple filed a motion to stay post-0trial activity pending CBM review.
The district court denied both motions, but did stay the actions against other defendants. The court denied the stays in part based on the perceived “gamesmanship” in filing the CBM petitions well after the litigation began and also based on the judicial economy in seeing the litigation through to the end.
The CAFC affirmed the district court’s decision not to stay Apple, but reversed as to Samsung. The CAFC reiterated the following four factors (as listed in AIA §18(b)(1)) that must be weighed in determining whether to grant a stay:
(a) simplification of the issues and potential to streamline the trial
(b) whether discovery is complete and a trial date set
(c) undue prejudice or tactical advantage
(d) burden of litigation on the parties and the court
With respect to Apple, the Court asserted that all the four factors weighed against a stay. Because the court and jury had decided infringement and invalidity issues, agency review would not streamline or simply issues for trial; discovery was complete; and the court and the parties had already spent time and resources on the litigation. The Court noted that Apple had a tactical advantage over Smartflash by having two separate forums to challenge validity.
However, with regard to Samsung, the Court concluded on balance, that the factors weighed in favor of a stay, given that the trial was yet to occur and the Apple appeal may well impact the Samsung trial.