Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePingTABs No. 29
In This Issue
· Taking Stock of AIA Petitions
· Latest Versions of G&B Spreadsheets
· Recent Developments In The Law
· In the News
Jill M. Browning
Taking Stock of AIA Petitions
The post-grant procedures continue to be popular, with inter partes review (“IPR”) proceedings filings keeping pace with past years in terms of number of petitions filed. According to the PTAB website (Trial Statistics), IPR petitions make up 92% of the total 7,168 post-grant AIA petitions filed through June 30, 2017.
Of note, institution rates have declined from 87% in FY13 to about 64% so far in FY17. Overall, the electrical/computer technology groups have the highest institution rate (70%), compared to Mechanical/Business method (71%), Design patents (42%), Bio/Pharma (64%) and chemical (68%).
The overall post-institution settlement rate for FY 16 and 17 has remained steady at 22%, declining from the FY15 rate of 29%.
Latest Version of G&B Spreadsheets
Recent Developments In The Law
Supreme Court to Review the Constitutionality of AIA Patent Review Proceedings.
On June 12, 2017, the Supreme Court granted certiorari in Oil States Energy Services v. Green’s Energy Group. The Board instituted the IPR filed by petitioner Green’s Energy. The PTAB found the claims at issue unpatentable. Oil States appealed to the CAFC, arguing that IPRs violated Article III and the Seventh Amendment of the Constitution because suits to invalidate a patent must be tried before a jury in an Article III court. The CAFC disagreed and affirmed the PTAB’s decision, implicitly relying on the precedent set by MCM Portfolio v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015). Oil States has petitioned the Supreme Court for certiorari, which granted the petition. This case will most likely be argued this winter, with a decision issued before June of 2018.
CAFC Remands PTAB Decision For Procedural Violation
In EmeraChem Holdings LLC v. Volkswagen Group of AM. Inc., (June 28, 2017), the Federal Circuit remanded an IPR proceeding to the PTAB for failing to adhere to the APA’s requirement that the patent owner be given adequate notice and opportunity to respond to rejections/invalidity arguments.
The PTAB’s final decision found the patent claims unpatentable as obvious. EmeraChem appealed, arguing (in part) that the PTAB violated the APA by not allowing adequate notice of, or an opportunity to respond to, the Board’s reliance on a reference. The reference in question was not specifically identified in either the petition or the institution order with respect to certain of the patent claims at issue (e.g., claims 3, 16 and 20). The Board, nevertheless, relied on the reference in its final written decision finding those claims unpatentable.
In concluding that the PTAB failed to provide the patent owner with adequate notice and opportunity to response, the CAFC rejected the PTAB’s argument that the institution decision provided fair notice because it generally stated that all of the claims at issue are likely unpatentable under the listed references.
IPR Terminated By Settlement 5 Days before Final Decision Deadline
In Petroleum Geo-Services Inc. v. Westerngeco LLC, IPR2016-00407, IPR2016-00499, the PTAB issued an order on July 5, 2017 terminating the proceedings (without a final written decision) based on a settlement reached by the parties a mere five days before the statutory deadline for the PTAB issue its decision. The PTAB issued an order once it had been informed of the settlement (by email), informing the parties of a deadline by which they must submit a joint motion to terminate the proceedings. Had the parties not complied, the parties were informed that a final written decision would issue.
This case is unusual in that the PTAB has, in the past, issued final written decisions despite the parties reaching a settlement, if such an agreement comes late in the proceedings. This one decision is not sufficient to indicate that the PTAB has changed its policy, but emphasizes the wide discretion the PTAB has in managing its docket.
In the News
STRONGER Act Proposes Changes to AIA Trial Proceedings
On June 21, 2017, Senator Chris Coons (D – DE) introduced the STRONGER (Support Technology and Research for Our Nation’s Growth and Economic Resilience) Patents Act. This bill was co-sponsored by Senators Tom Cotton (R – AK), Dick Durbin (D – IL), and Mazie Hirono (D – HI) and purports to “protect and support inventors and innovators and ensure that our patent system protects this essential property right.”
The STRONGER Patents Act seeks to change many aspects of the AIA-implemented post-grant review proceedings. The ACT purports to seek to make the post-grant proceedings more fair and efficient and address issues such as the strategic filing of proceedings to impact stock prices and extort settlements as well as the multiple petitions filed against patent owners and the duplication of work by the district courts.
Michelle Lee - Director of USPTO – Resigns
On June 6, 2017, Michelle Lee resigned her post as Under Secretary of Commerce for Intellectual Property and Director of the Patent and Trademark Office. While there has been much speculation with respect to her replacement, no one has been named as a front runner as of yet.