Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 21
In This Issue
· Taking Stock of IPR, CBM and PGR Petitions
· Recent Developments In The Law
Petitioner has the burden to show prior art reference is entitled to priority date.
PTAB granted rehearing request and permitted second petition by same petitioner to be filed
PTAB lacks jurisdiction to review PTO’s grant of a petition to revive an abandoned application.
Jill M. Browning
Jill M. Browning
Bruce Stoner, Chairman, Reexamination and Post-Grant Practice Group
Jill M. Browning or
Taking Stock of IPR, CBM and PGR Petitions
Since September 16, 2012, over 3,671 petitions for inter partes review (“IPR petitions”) have been filed, as well as over 392 petitions directed to covered business methods (“CBM petitions”), and 14 petitions utilizing the post grant review process (“PGR petitions”). It is clear that the post grant procedures continue to grow in popularity and are here to stay.
So far, the PTAB has been able to issue its final decisions within the twelve month statutory deadline. To date, based on the USPTO statistics, IPR petitions have resulted in 4496 claims being found unpatentable by the PTAB. According to the Patent Office statistics, 17,675 claims have been challenged by IPR petitions, out of which trial was instituted involving 11,114 claims. CBM petitions have resulted in 1,979 claims subjected to trial, out of which 1,002 claims were found unpatentable by the PTAB.
The CAFC has been largely affirming the PTAB’s decisions – predominantly by Rule 36 affirmances without opinions.
Patents from the electrical/computer arts continue to constitute the largest percentage (about 63%) of all petitions filed, with mechanical/business methods coming in at 23%, bio/pharma at 9%, and chemical at 5%.
Recent Developments In The Law
The Federal Circuit issued an opinion in this appeal from the PTAB’s decision in IPR2013-00131. The primary issue involves which party caries the burden to establish the effective date of a prior art reference under 35 U.S.C. §102(e). The Federal Circuit affirmed the Board’s finding that the petitioner has the burden to establish, by a preponderance of the evidence, that the prior art patent should obtain benefit of its priority date (here, the date of the provisional application) by showing support for the invalidating disclosure in the provisional application.
National Graphics owns a patent directed to making molded plastic articles bearing a “lenticular” image. Dynamic petitioned the PTO for inter partes review of the patent, arguing that some of the patent claims were anticipated by the US reference patent which is entitled to the benefit of the earlier provisional filing date. The Board concluded that the petitioner failed to establish that the reference was entitled to its provisional priority date and the petitioner appealed.
The petitioner argues that the Board erred in shifting the burden to the petitioner to show that the reference patent is entitled to the filing date of its provisional application. “According to Dynamic, as a presumptively valid prior art patent, the reference patent’s effective date is its provisional application filing date.” The petitioner contends that the patent owner should have the burden to show that the patent was not prior art to the National Graphics’ patent because the asserted prior art patent was not entitled to the filing date of its provisional application.
The Court disagreed, pointing out that the PTO does not typically examine priority claims during prosecution and, thus, priority claims are not entitled to a presumption of adequate written description support. Rather, a petitioner asserting that a reference patent should have an effective date of an earlier provisional filing date must show that the portions of the prior art that are relied upon were carried over from the provisional filing.
Here, the petitioner provided charts comparing the claims of the targeted patent to the disclosure of patent – but not the disclosure in its provisional application.
Second IPR petition may be instituted and joined to existing IPR even though second petition runs afoul of the statute of limitations. Zhongshan Broad Ocean Motor Co. v. Nidec Motor Corp., IPR2015-00762 (October 5, 2015)(Paper 16):
The PTAB granted a Request for Rehearing, in an expanded panel, allowing a second IPR petition to be instituted even though the second petition corrected an error in the first IPR petition and is time barred. The PTAB typically denies institution of a second IPR (filed by the same petitioner) that simply corrects the mistakes pointed out by the PTAB’s first decision denying institution. Here, the petitioner filed a petition to institute an IPR along with a motion to join the proceeding to an existing IPR (which was timely filed within one month of institution of the existing IPR). The PTAB’s first panel denied institution as time barred under 35 U.S.C. §315(b).
The Decision on Rehearing reversed this conclusion, finding that Section 315(c) permits joinder of any person who properly files a petition under §311, including a petitioner who is already a party to an earlier instituted IPR. The PTAB further indicated that §315(c) includes both party and issue joinder, such that new grounds of unpatentability may also be joined.
PTAB has no jurisdiction to review PTO’s decision to revive an abandoned application. Samsung Electronics Co. Ltd. and Samsung Electronics America, Inc. v. E-Watch, Inc., Patent Trial and Appeal Board, IPR2015-00612, Decided July 8, 2015:
The PTAB determined that it does not have jurisdiction to review and determine the status of an application as abandoned or revived when determining whether a challenged patent is entitled to claim priority of an earlier filed application. In this case, the Petitioner (Samsung) contends that the claims of the challenged patent are not entitled to the earlier filing date of the parent application because of lack of copendency between the child application and the parent application. Petitioner argued that the Office’s granting of the petition to revive the parent patent application was incorrect and, thus, the challenged patent is not entitled to the filing date of the parent patent application.
The Board concluded that it lacked jurisdiction to review this issue because it does not have jurisdiction over procedural matters which are not central to the substantive merit of a patentability determination. Simply put, “PTO revival actions are not subject to third party challenge under APA.”