Greenblum & Bernstein, P.L.C.



keePingTABs  No. 30


November 2017   

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

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 IPR filings through October 31, 2017.


Please click here for the latest G&B spreadsheet reflecting all CBM filings through October 31, 2017.


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. 



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. 



The GREENBLUM & BERNSTEIN keePing TABs NEWSLETTER is issued by GREENBLUM & BERNSTEIN, P.L.C., an intellectual property firm, to provide timely news in the field of intellectual property.  The NEWSLETTER provides monthly updates on recent issues of general interest in this field.  The views and/or opinions expressed herein do not necessarily reflect those of GREENBLUM & BERNSTEIN, P.LC.  Information regarding the contents of the Newsletter can be obtained by contacting Bruce Stoner at GREENBLUM & BERNSTEIN, P.L.C., 1950 Roland Clarke Place, Reston, VA 20191.  © 2017 GREENBLUM & BERNSTEIN, P.L.C.