Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePingTABs No. 28
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
The AIA proceedings continue to gain in popularity. Through March 31, 2017, there have been a total of 67oo AIA petitions, broken down as follows: 6139 petitions for inter partes review (“IPR petitions”), 510 petitions directed to covered business methods (“CBM petitions”) and 51 Post-Grant Review (PGR) petitions.
The petitions filed in the Bio/Pharma space (TC 1600) is slightly down from 13% in FY 16 to about 11% so far in FY17. The majority of the petitions continues to be filed in the electrical/computer space (TCs 2010, 2400, 2600 and 2800). This number totals 60% for FY17 (so far), up from 55% in FY16. The petitions filed in the Mechanical/Business Method (TCs 3600, 3700) is currently at 21%, down from 24% in FY16.
The PTAB provides the Current Business Day’s list of AIA Review Decisions, as well as the Prior Business Day’s List: https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-board/aia-review-decisions
This is a convenient way to keep up with the most recent decisions.
Latest Versions of G&B Spreadsheets
Recent Developments In The Law
The PTAB misinterpreted the holdings in Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015).
On March 14, 2017, the CAFC, in NIDEC Motor Corp. v. Zhongshan Broad Ocean Motor Col. Ltd., (C.A. 2016-1900), reversed a PTAB decision because the Board improperly applied Kennametal, Inc. v. Ingersoll Cutting Tool Co. 780 F.3d 1376, 1381 (Fed. Cir. 2015). The Board concluded that the patent-in-suit was anticipated by prior art, even though the prior art was missing at least one limitation because, based on Kennametal, a person of skill in the art reading the reference would “at once envisage” the claimed arrangement or combination.
On appeal, the CAFC explained that “Kennametal does not stand for the proposition that a reference missing a limitation can anticipate a claim if a skilled artisan viewing the reference would ‘at once envisage’ the missing limitation”. Rather, Kennametal related to a situation where the prior art disclosed a limited number of combinations, one of which anticipates the claim. The CAFC admonished that “Kennametal does not permit the board to fill in missing limitations simply because a skilled artisan would immediately envision them”.
Question to Supreme Court: Does 35 U.S.C. §318 (a) require the PTAB to issue a written decision on every claim challenged in an IPR?
A petition for a writ of certiorari was filed with the Supreme Court by SAS Institute, seeking review of the following question: Does 35 USC §318(a), which provides that the PTAB in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” require the PTAB to issue a final written decision as to every claim challenged by the petitioner, or may the Board address a subset of those patent claims challenged?
The CAFC, in ComplementSoft v. SAS, 825 F.3d 1341 (Fed. Cir. 2016), held that all the claims challenged in an IPR petition do not have to be addressed in the final PTAB written decision. Judge Newman dissented, saying that this decision was a right to “pick and choose”, negating the AIA’s purpose, and since the decision to institute is not appealable, giving immunity to the PTAB.
We will continue to monitor this case.
The PTAB Not Obligated to Address every Argument Raised
In Novartis AG, Mitsubishi Pharma Corp., v. Torrent Pharmaceuticals Limited, Apotex Inc., Mylan Pharmaceuticals Inc., (2016-1352, April 12, 2017), the CAFC invalidated the patent covering Novartis’ drug, Gilenya.
In 2014, Torrent filed a petition to institute an IPR of a Novartis patent directed to its FDA-approved drug “Gilenya” which treats multiple sclerosis (MS) and results in billions in sales each year.
The PTAB invalidated the Novartis patent as obvious in view of a prior art patent and an article titled “Pharmaceutics: The Science of Dosage form Design” (Aulton). In so doing, however, the PTAB used a reference as a background reference to provide motivation to combine the two references, even though this reference was earlier found to be “inapplicable” and not sufficient basis to institute an IPR.
Novartis argued that use of this reference was inconsistent with the APA requirement that it be given notice and an opportunity to respond. Novartis submitted that it would have presented its case differently had it realized that the Board would have re-visited use of this reference.
The CAFC affirmed the Board, however, noting that the PTO did not “change theories in midstream without giving respondents reasonable notice of the change” and the ability to present argument under the new theory. Rather, the CAFC concluded that the offending reference was ruled out entirely, but only excluded as anticipating Novartis’ patent. Thus, the PTAB was not prevented from discussing the reference and, in fact, the CAFC found that the parties “debated [the reference] at length throughout the proceedings.”
Novartis also argued that the PTAB did not expressly address all of its arguments. The CAFC, however, held that there is no requirement that the CAFC should review “each and every negative and positive piece of evidence lurking in the record to evaluate a cursory argument”. Rather, “the failure to explicitly discuss every issue or every piece of evidence did not alone establish that the tribunal did not consider it” citing Carolina Tobacco Co. v. Bureau of Customs & Border Prot., 402 F.3d 1345, 1350 (fed. Cir. 2005) and Synopsys, Inc., v. Mentor Graphics Corp., 814 F.3d 1309, 1322, (Fed. Cir. 2016).
Michelle K. Lee, the Director of the USPTO is launching an initiative to shape and improve the PTAB trial proceedings, particularly focusing on Inter Partes Review proceedings. The PTO plans to use the 5 years of data and experiences to attempt to ensure that the proceedings are “as effective and fair as possible”. Of note, motions to amend, claim construction and decisions to institute will be reviewed.
It is widely believed that the AIA proceedings, including IPRs, allow challenges to patents to proceed faster and cost less than district court litigation. Reviews and feedback can be sent to: PTABProceduralReformInitiative@uspto.gov.