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Greenblum & Bernstein, P.L.C. REEXAMINATION AND
POST-GRANT PRACTICE GROUP
NEWSLETTER keePingTABs No.
29 |
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August 2017 |
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In
This Issue · Taking Stock of AIA
Petitions · Latest Versions
of G&B Spreadsheets · Recent
Developments In The Law · In the News Contact
Us: Jill
M. Browning www.gbpatent.com JBrowning@gbpatent.com 703-716-1191 (phone) |
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
Please
click here for the latest G&B spreadsheet reflecting all IPR filings
through July 31, 2017. Please
click here for the latest G&B spreadsheet reflecting all CBM filings
through July 31, 2017.
Please
click here for the latest G&B spreadsheet reflecting all PGR filings
through July 31, 2017.
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. |
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