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Greenblum & Bernstein, P.L.C. REEXAMINATION AND
POST-GRANT PRACTICE GROUP
NEWSLETTER keePingTABs No.
28 |
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May 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 www.gbpatent.com JBrowning@gbpatent.com 703-716-1191 (phone) |
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
Please
click here for the latest G&B spreadsheet reflecting all IPR filings
through April 28, 2017. Please click here for the latest G&B spreadsheet reflecting all CBM filings through April 28, 2017.
Please click here for the
latest G&B spreadsheet reflecting all PGR filings through April 28, 2017.
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). PTAB Reform
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. |
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