Greenblum & Bernstein, P.L.C.

REEXAMINATION AND POST-GRANT

PRACTICE GROUP NEWSLETTER

keePing TABs  No. 25

August 2016   

In This Issue

·    Taking Stock of IPR, CBM and PGR Petitions

·    Latest Versions of G&B Spreadsheets

·    Recent Developments In The Law

Contact Us:

Jill M. BrowningJBrowning@gbpatent.com

Or

Bruce Stoner,
Chairman, Reexamination and Post-Grant Practice Group

www.gbpatent.com

BStoner@gbpatent.com

703-716-1191 (phone)

Taking Stock of IPR, CBM and PGR Petitions

There were 176 petitions filed in June, challenging 128 patents. This was the most petitions filed in any month since August 2015. The Board continues to institute trial in a high number of petitions -- 89 of 138 decisions in June, although this institution rate is lower than in past months.

The Board issued 62 final written decisions in June, 54 in IPRs, 6 in CBMs, and 2 in PGRs, covering 45 unique patents. The Board cancelled 73% of the claims it ruled on, leaving on 27% in tact.  

Latest Editions of Spreadsheets

Please click here for the latest G&B spreadsheet reflecting all IPR filings through August 31, 2016

Please click here for the latest G&B spreadsheet reflecting all CBM filings through August 31, 2016

Please click here for the latest G&B spreadsheet reflecting all PGR filings through August 31, 2016

Recent Developments In The Law

An Overview of Amendments to the PTAB Rules

The final rule on Amendments to the Rules of Practice for Trials Before the PTAB issued on April 27, 2016.

• Claim Construction Standard

The amended rule 42.200(b) clarified that either party can request application of the Phillips-type standard rather than the broadest reasonable interpretation standard set out in In re Cuozzo Speed Techs. LLC, if the party can certify that the patent will expire within 18 months from the date of filing the AIA petition.

• Patent Owner’s Preliminary Response

Amended Rule 42.107 now allows the patent owner to provide testimonial evidence before institution. In addition, the petitioner can seek leave to reply to the patent owner’s preliminaryoresponse.

However, the petitioner must show good cause for seeking leave. An example of good cause may be that the patent owner’s testimonial evidence raises a genuine issue of material fact.

• Rule 11-Type Certification and Sanctions

The new rules also provide a Rule 11-type certification in Rule 42.11, which may provide a basis for a party to file a motion for sanctions for noncompliance or violation of the duty of candor. The PTAB does not expect to impose sanctions frequently, but the rule provides notice to the public on what the Board expects in regards to compliance. The movant must serve the motion at least 21 days before seeking authorization to file the motion. In addition, the Board can issue an order sua sponte requiring a party to show why they should not be sanctioned.

Intelligent Bio-Systems, Inc., v. Illumina Cambridge Ltd.,
821 F.3d 1359 (Fed. Cir., May 9th, 2016)

On May 9, 2016, in Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., the CAFC affirmed the PTAB inter partes review decision that U.S. Patent No. 7,566,537, which related to the sequencing by synthesis (SBS) method of labeling nucleotides in polynucleotide sequencing methods, was not invalid for obviousness under 35 U.S.C. § 103.

The CAFC noted that the court improperly conflated the legal concept of “reasonable expectation of success” with the motivation to combine two references, noting that the reasonable expectation of success “refers to the likelihood of success in combining references to meet the limitations of the claimed invention.” The court noted that it “sits to review judgments, not opinions.” Thus, while the Board misapplied the legal concepts, it nevertheless made sufficient factual findings to support its judgment that the claims at issue are not invalid.

IBS had the burden to show both that “a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.”

IBS failed to meet this burden. The CAFC concluded that the Board was justified in finding the claims not invalid.

The CAFC admonished against raising issues for the first time in a Reply, noting that Petitioners before the PTO have less freedom to revise and develop arguments over time. “Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute. While the Board’s requirements are strict ones, they are requirements of which petitioners are aware when they seek to institute an IPR.”