Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePing TABs No. 24
In This Issue
· Taking Stock of IPR, CBM and PGR Petitions
· Latest Versions of G&B Spreadsheets
· Recent Developments In The Law
Jill M. Browning
Taking Stock of IPR, CBM and PGR Petitions
Through March 31, 2016, there have been 4,288 petitions for inter partes review (“IPR petitions”) filed, as well as 433 petitions directed to covered business methods (“CBM petitions”) and 22 Post-Grant Review (PGR) petitions. The number of PGR petitions rose from 15 to 22 in the past 3 months, signaling, perhaps, an increased number of eligible candidates for this proceeding.
According to the USPTO’s website reflecting its statistics, the percentage of AIA petitions filed in the bio/pharma arts (shown in purple below) rose from 9% in FY 15 to 13% thus far for FY 16 and the total AIA petitions for the electrical/computer arts (shown in blue below) declined from 63% to 54%:
Latest Editions of Spreadsheets
Please click here for the latest G&B spreadsheet reflecting all PGR filings through March 31, 2016.
Recent Developments In The Law
PTAB Determines SEC Document was Publicly Accessible And Institutes IPR
The PTAB instituted an IPR against a patent filed by Kyle Bass that utilized an SEC document disclosing a clinical protocol. The petitioner explained, via a former academic librarian, that the document could be accessed by the public after being filed. The PTAB concluded that the petitioner demonstrated that the document was publicly accessible before the effective filing date of the patent because “a given reference is ‘publicly accessible’ upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence, can locate it”.
PTAB Institutes Kyle Bass IPRs against Juxtapid patents.
The PTAB instituted an IPR filed by Kyle Bass against two of the five Juxtapid patents listed in the Orange book. The Petitioner argued that the challenged claims were not entitled to the March 5, 2004, priority date of a provisional application based on lack of disclosure. The PTAB sided with Petitioner, according the patents a priority date of March 7, 2005, and making certain art qualify as prior art under 35 U.S.C. §102(b).
CAFC Affirms BRI As Claim Construction Standard
PPC Broadband, Inc. v. Corning Optical Communications LLC., (Fed. Cir. February 22, 2016)
The Supreme Court will not decide the claim construction standard that should be used at the PTAB in IPR proceedings until later this term, when it decides In re Cuozzo. In the meantime, however, the CAFC has issued its decision in PPC Broadband. In this case, PPC Broadband owns three patents, all of which claim a coaxial cable connector with a “continuity member.” The PTAB instituted the IPR against the three patents and applied the “broadest reasonable interpretation” standard (BRI) to construe the claim limitation at issue. PPC argued this construction was unreasonably broad in light of the claims and specification and argued for a more narrow interpretation in view of the specification. Thereafter, the Board issued a final decision holding that the challenged claims unpatentable.
The CAFC emphasized the importance of the claim construction standard that is used, stating that the outcome here “hinge[d] on the claim construction standard applied—a scenario likely to arise with frequency.” Under the Phillips standard, the construction of the term “continuity member” would be as proposed by PPC. However, a claim construction under the BRI standard (BRI consistent with the specification) compels a different result.
Several amici briefs that have been filed with the Supreme Court in connection with the Court’s review of the BRI standard in In re Cuozzo have pointed to this case in support of their positions. The Supreme Court heard argument in In re Cuozzo on April 25, 2016 and a decision is expected during this term.
CAFC Affirms Burden On Patent Owner To Show Patentability Of Substitute Claims
Nike Inc. v. Adidas AG, (Fed. Cir. 2016). In an IPR brought by Adidas against Nike’s patent, Nike moved to amend its claims in response to arguments bade by petitioner. The PTAB ruled, and the CAFC agreed, that the patent owner has the burden to establish that the amended claims are patentable over all of the prior art of record, as well as any prior art about which the patent owner is aware. The PTAB denied Nike’s motion to amend, faulting Nike for failing to address art not of record, but which is known to Nike. Importantly for future practice, the Court agreed that a patent owner’s statement that the amended claims were patentable over art known to Nike, but not part of the record, even though conclusory, is sufficient to meet the burden.