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Greenblum & Bernstein, P.L.C. REEXAMINATION AND
POST-GRANT PRACTICE GROUP
NEWSLETTER keePingTABs No.
27 |
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February 2017 |
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In
This Issue · Taking Stock
of AIA Petitions · Latest
Versions of G&B Spreadsheets · Recent
Developments In The Law Contact
Us: Jill
M. Browning Or
Bruce
Stoner, www.gbpatent.com JBrowning@gbpatent.com 703-716-1191 (phone) |
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.”
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