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Greenblum & Bernstein, P.L.C. REEXAMINATION AND
POST-GRANT PRACTICE GROUP
NEWSLETTER keePingTABs No.
30 |
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November 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”) petitions keeping
pace with past years. According to the
PTAB website (Trial Statistics), IPR petitions make up 92% of the total 7,557
post-grant AIA petitions filed through September 30, 2017. PGR petitions continue to rise in number,
with the total filed now at 78. There
have been a total of 524 CBM petitions filed through September 30, 2017. Of note, filing new
testimonial evidence (“NTE”) with the Preliminary Response (permitted as of
May 2, 2016) is most popular in chemical cases. NTE is filed in 63% of the
cases wherein a preliminary response is filed. NTE is filed in 49% of Bio/Pharma cases and
between 35-37% of the remaining cases.
The overall institution rate declined from 67% in FY16 to 63% in
FY17. With respect to settling
AIA proceedings, both the pre-institution and post institution settlement
rates held steady at 14% and 22% respectively for both FY16 and FY17 Latest
Version of G&B Spreadsheets
Please click here for the
latest G&B spreadsheet reflecting all PGR filings through October 31,
2017. Recent
Developments In The Law
CAFC Finally Issues Aqua
Products, Inc. v. Matal en banc Ruling
In Aqua Products, Inc (October 4, 2017), the
Federal Circuit addressed, in a highly fractured opinion (five written opinions), whether
the patent owner has the burden of proving the patentability of amended
claims submitted (for the first time) during the IPR proceeding. The CAFC concluded that the PTAB cannot
place this burden on the patent owner but, rather, the burden of persuasion
remains on the petitioner to show the newly presented amended claims are
unpatentable. In making this ruling,
the CAFC found 35 USC §316(e) (which establishes the evidentiary standard for
IPRs) to be unclear and thus did not
give deference to the PTAB’s statutory interpretation. The CAFC remanded the case to the PTAB to determine, under
§ 318(a), the patentability of the amended claims under the appropriate
burden. The CAFC further instructed
the PTAB to follow this ruling in all pending IPRs, unless and until the
Director engages in notice and comment rule-making. This decision is expected to encourage
patent owners to file motions to amend their claims in response to validity
challenges and to also result in more amended claims surviving the
patentability challenge. |
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PTAB designates as “precedential” CAFC’s Husky Decision
finding assignor estoppel is not a defense in IPRs
On August 2,
2017, the PTAB designated as “precedential” its 2013 IPR Final Written Decision
in Athena Automation Ltd. v. Husky Injection Molding System Ltd. This decision concluded
that the doctrine of assignor estoppel is not an exception to 35
U.S.C. § 311(a) and, thus, does not prevent the institution of the IPR
trial. The Patent
Owner, Husky, asserted in its preliminary response that Athena should be barred
from bringing an IPR by the doctrine of assignor estoppel. The CAFC has explained that assignor
estoppel is an equitable doctrine prohibiting an assignor of a patent or
patent application, or one in privity, from attacking the validity of that
patent when sued for infringement by the assignee. Husky alleged that one of the named
inventors of Husky’s patent was in privity with Athena. The PTAB
contrasted 35 U.S.C. § 311(a) of IPRs (the statute granting the PTAB
authority to institute an IPR) with 19 U.S.C. § 1337 (the statute granting
the ITC authority to investigate patent-infringing imported goods). The AIA statute indicates only that “a
person who is not the owner of a patent” may file an IPR. On the other hand, in the ITC statute, Congress
explicitly provided that “all legal and equitable defenses may be presented
in all cases.” Thus, because an
assignor is no longer the owner of the patent and Congress did not explicitly
provide for the assertion of all equitable defenses, estoppel is not an
exception to 35 U.S.C. § 311(a) and does not prevent the institution of an
IPR trial. CAFC Affirms PTAB’s CBM Ruling In PTAB Return Mail, Inc. v. United States Postal Service
In August,
2017, the CAFC concluded that it had the authority to address the standing
issued, even though this decision was made as part of the determination to
institute the CBM. Return’s mail patent is directed to the processing mail that is undeliverable because of an inaccurate or obsolete address by “encoding useful information…on mail items in the form of a two-dimensional barcode.” After Return Mail tried unsuccessfully to license the patent to the Postal Service, Return filed suit under 28 U.S.C. 1498(a), alleging infringement. The Postal Service filed a CBM petition, raising arguments under § 101, 102 and 103. The Board found Return Mail’s claims patent-ineligible under Section 101 because the claims were directed to an abstract idea (relaying mailing address data). The CAFC affirmed, first agreeing that the Postal Service has standing because the government was sued for infringement. |
