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Greenblum & Bernstein, P.L.C. REEXAMINATION AND
POST-GRANT PRACTICE GROUP
NEWSLETTER keePingTABs No.
31 |
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February 2018 |
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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 PTAB reports a total of
8067 AIA petitions filed through January 31, 2018. Of that number, 92% or 7,437 are inter
partes review (“IPR”) petitions; 539 Covered Business Method petitions and 91
Post-Grant Review (“PGR”) petitions. Of note, PGR petitions
continue to grow in number, as the number of patents eligible to participate
in these proceedings continues to grow.
Institution rates for all
proceedings have declined to 61%. In
FY16, the institution rate was 67% and in FY17, it was 63%. Post-institution
settlements is about 23%, up slightly from the FY17 22% reported number. Latest
Version of G&B Spreadsheets
Please click here for the
latest G&B spreadsheet reflecting all PGR filings through January 31,
2018. Recent
Developments In The Law
PTAB Designates Two Decisions “Informative”
Luv N’ Care, Ltd. v. McGinley, Case IPR2017-01216 (PTAB Sept. 18, 2017) (Paper 13). The Board denied institution after determining
that the Petition was not timely filed under 35 U.S.C. § 315(b) based on the
date the payment was received. The
Office did not receive payment until after the date the Petition was filed
and the Board determined that the Petitioner failed to show good cause to
waive the fee requirement and denied Petitioner’s motion to assign an earlier
filing date. Amneal Pharmaceuticals,
LLC v. Endo Pharmaceuticals, Inc., Case
IPR2014-00360 (PTAB June 27, 2014) (Paper 15). The Board
deemed a Petition timely filed under 35 U.S.C. § 315(b) because filing a
motion to file an amended complaint (adding a new patent) is not “service” of
the amended complaint (even though the amended complaint was attached to the
motion) that would trigger the one year statute of limitations to file an
IPR. Rather, the Court, in the
district court litigation, granted the motion to file the amended complaint
and set a deadline by which the amended complaint must be filed and responded
to. The date the plaintiff filed the
amended complaint (and served it) is the date that constitutes “service” of
the complaint, thereby triggering the one-year time bar under Section
315(b). Federal Circuit Rules PTAB’s Determination of Time Bar
Under Section 315(b) Is Appealable
In Wi-Fi One, LLC v. Broadcom Corp., (Fed. Cir. January, 2018), the Federal Circuit issued an en banc decision holding that PTAB determinations of whether inter partes review petitions are time-barred under 35 USC 315(b) are appealable. Wi-Fi argued that the USPTO Director was barred from instituting inter partes review under § 315(b) because Broadcom was in privity with defendants in the previous litigation, who had been served a complaint more than one year before Broadcom filed its petitions. The original CAFC 3-judge panel disagreed, citing prior court precedent that prohibited judicial review of the Board’s decision not to institute based on the time-bar of § 315(b). The en banc panel vacated the prior decision, holding that the panel’s decision was inconsistent with the “strong presumption” that favors judicial review of administrative actions and further fining that Congress did not indicate a “clear and convincing” intent to preclude judicial review of the PTAB’s § 315(b) time-bar determinations. SUPREME COURT HEARS CASE ON CONSTITUTIONALITY OF
POST-GRANT AIA PROCEEDINGS
In November,
2018, the Supreme Court heard argument on whether the post-grant AIA
proceedings should be scrapped for violating the constitutional rights of the
patent owners. A decision finding the
inter partes review proceedings unconstitutional would have a significant
impact on patent litigation in the United States and would immediately raise
concerns regarding the fate of those patents already found unpatentable under
such a proceeding.
We will
continue to provide updates with respect to this case. A decision is expected by the end of June,
2018. IN THE NEWS
Fee Increase: In January, 2018, the USPTO patent fees
increased. The fees associated with inter partes review increased 72%, from
$9,000 to file an IPR request to 15,500.
The post-institution fee rose from $14,000 to $15,000, making the
total $30,500 to file an IPR on 20 claims or less (if instituted). |
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