Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePingTABs No. 27
In This Issue
· Taking Stock of AIA Petitions
· Latest Versions of G&B Spreadsheets
· Recent Developments In The Law
Jill M. Browning
Taking Stock of AIA Petitions
Through November 30, 2016, the PTO reports that 5446 petitions for inter partes review (“IPR petitions”) filed, as well as 489 petitions directed to covered business methods (“CBM petitions”) and 43 Post-Grant Review (PGR) petitions. The number of IPR and CBM petitioner declined in Fiscal Year 2016 (“FY 16”) compared to FY 2015. Specifically, in FY 15, there were a total of 1737 IPR and 149 CBM petitions filed, compared to 1565 IPR and 94 CBM petitions filed in FY 16. The total number of PGR’s increased, however, from 11 in FY 15 to 24 in FY 16, which was to be expected given the growing number of issued patents qualifying for the PGR procedure. The number of Bio/Pharma petitions has increased from about 9% in FY 15 to 13% for FY 16, while the number of electrical/computer petitions has declined from 63% in FY 15 to 55% thus far in FY 16.
Patent Owners continued to file preliminary responses in FY 16 in the vast majority of cases, with only 239 instances reported so far not filing such a response.
Latest Versions of G&B Spreadsheets
Please click here for the latest G&B spreadsheet reflecting all PGR filings through January 31, 2017.
Recent Developments In The Law
The CAFC defines the standing requirement to challenge a PTAB decision
On January 9, 2017, in Phigenix, Inc., v. Immunogen, Inc., the CAFC clarified the conditions a petitioner must meet to have standing to challenge a USPTO decision on appeal. Phigenix filed an IPR against ImmunoGen’s U.S. patent No. 8,337,856 (the ’856 patent) arguing that 8 claims (directed to the treatment of breast cancer) were unpatentable. ImmunoGen licensed the patent to Genentech, who makes Kadcyla to treat breast cancer. The PTAB did not find the ‘856 patent claims unpatentable and Phigenix appealed. The CAFC dismissed the appeal for lack of standing, stating that three conditions must be fulfilled to meet the standing requirement: “(1) the petitioner must suffer an injury in fact, (2) that is fairly traceable to the challenged conduct of the appellee, (3) that is likely to be redressed by a favorable judicial decision”. The CAFC concluded that Phigenix did not establish that it has suffered an injury, and so lacks standing to pursue the appeal. The CAFC rejected Phigenix’s argument that it suffered actual economic injury because the ‘856 patent increases competition between itself and ImmunoGen such that some portion of ImmunoGen’s revenue could have been received by Phigenix. Phigenix did not show that it risks infringing the ‘856 patent or that it is an actual or prospective licensee.
The diligence standard requires a reasonably continuous diligence and not a continuous reasonable diligence exercise
In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., Case No. 15-2043 (Nov. 15, 2016), the CAFC vacated and remanded the PTAB’s decision that Perfect Surgical Techniques (PST) failed to antedated the prior art because it did not prove that the inventor of the ‘384 patent was “reasonably diligent in reducing his invention to practice”. The critical period to establish diligence in this case began just prior to the reference’s effective date and concluded on the date the invention was reduced to practice. The inventor testified that he “diligently worked with” his patent attorney during the critical period according to his schedule as a surgeon and a lecturer. PST produced testimony as well as correspondence and the attorney’s billing records which did not show daily activity, but did include several precise dates within the critical period.
While the PTAB concluded that that the inventor failed to show “continuous exercise of reasonable diligence for the entire critical period,” the CAFC rejected this standard, indicating that the PTAB’s threshold was too high and thus conflicted with CAFC precedent, which holds that “a patent owner need not prove the inventor continuously exercised reasonable diligence throughout the critical period; it must show there was reasonably continuous diligence.” (citing Tyco Healthcare Grp. v. Ethicon Endo-Surgery, Inc. and Monsanto. The CAFC indicated that the standard does not require the inventor to work every day, and further that a period of inactivity would not “automatically vanquish” a claim of reasonable diligence. Rather, the standard assures that “the invention was not abandoned or unreasonably delayed”.
Precision of the hearsay doctrine
In REG Synthetic Fuels, LLC, v. Neste Oil OYJ, (November 8, 2016, the CAFC vacated and remanded the PTAB’s decision to exclude email evidence as hearsay. The PTAB instituted an IPR filed by Neste Oil against REG Synthetic’s U.S.P. 8,231,804 over the art, which REG tried to swear behind using emails exchanged between the inventor and a third party (Microtek) before the patent filing date proving “a conception and reduction to practice before the filing date of” the reference. The emails indicate that the inventor had trouble “reaching a 90% purity” and that “80% purity was the best they got”. On appeal, PEG argued that the emails were not submitted for the truth of the matter asserted, but as evidence that the inventor “recognized and communicated his conception of the invention to a third party” before a certain date. The CAFC agreed, stating that “the act of writing and sending the email is, by itself probative evidence.
The ineffective use of swear-behind evidence before the PTAB
In Boeing Company v. Seymour Levine, IPR2015-01341, the PTAB rejected Seymour Levine’s swear-behind testimony used to try to save some claims of its patent RE39618 challenged in the IPR. The prior art was filed only 2 months before the patent at issue and thus Seymour attempted to swear behind the art, arguing that the inventor was the first to conceive the invention and diligent in reducing the same to practice. However, Seymour failed to provide sufficient evidence to corroborate the inventor’s testimony which, “standing alone, is insufficient to prove conception and diligence, as some from or corroboration is required”.
CAFC refuses to rehear en banc a PTAB decision to institute certain claims (as oppose to all the asserted claims) in an IPR
On November 7, 2016, in SAS Institute, Inc. v. Complementsoft, LLC, U.S., the CAFC refused to rehear en banc the CAFC’s decision not to review the PTAB’s decision to institute the IPR on only some claims, as opposed to all of the claims that were the subject of the petition. The CAFC indicated that the AIA only requires the PTAB to address the claims “as to which review was granted.” Judge Newman dissented, saying that choosing only certain claims to be addressed in an IPR is “contrary to the goals of the AIA” and obligates the parties to litigate the remaining claims.
PTAB Concludes Sovereign Immunity Applies To IPR Proceedings
On January 25, 2017, the PTAB concluded, in Covidien LP v. University of Florida Research Foundation, No. IPR2016-01274, concluded that certain patent owners are shielded from IPR proceedings by way of the Eleventh Amendment. Specifically, if the patent owner is determined to be an “arm of the state” (such as, in this case, the University of Florida), sovereign immunity prevents the IPR challenge. The PTAB rejected Petitioner’s arguments that the patent is a public right and that the IPR is directed against the patent, as opposed to the state or another party. Rather, the PTAB applied precedent in concluding that the IPR is an “adjudicatory agency proceeding that meets all the requirements … for sovereign immunity to apply.”