Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePingTABs No. 32
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 PTAB reports a total of 8,340 AIA petitions filed through March 31, 2018. Of that number, 92% or 7,686 are Inter Partes Review (“IPR”) petitions; 545 Covered Business Method petitions and 109 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.
Latest Version of G&B Spreadsheets
Please click here for the latest G&B spreadsheet reflecting all PGR filings through April 30, 2018.
Recent Developments In the Law
Supreme Court Holds that USPTO Must Adjudicate the Patentability of All Challenged Claims
On April 24, 2018, in SAS Institute, Inv. v. Iancu, the Supreme Court issued a 5-4 decision holding that when the Director institutes an Inter Partes Review (“IPR”), the US Patent and Trademark Office (“USPTO”) must adjudicate the patentability of all the claims challenged in the IPR petition.
The Supreme Court examined the text of Section 318(a), and observed that (i) the word “shall” generally imposes a nondiscretionary duty, (ii) the word “any” ordinarily implies every member of a group, (iii) the Director’s “partial institution” power appears nowhere in the Statutory language, and (iv) both the plain language and context of the Statute strongly counsel against inferring such a power.
This decision reversed the USPTO’s prior interpretation of the IPR Statute(s) and will clearly have broad reaching impact on IPR strategies.
No Change in US Law of Inter Partes Review(S): US Supreme Court Holds that Inter Partes Review(S) are Constitutional in Oil States Energy Services v. Greene’s Energy Group
On April 24, 2018, the Supreme Court, in a 7-2 decision, affirmed the holding of the Court of Appeals for the Federal Circuit (“CAFC”) that IPRs are constitutional.
The Court concluded that having the governmental agency decide IPRs does not violate Article III, despite the similarities between procedures employed by the USPTO and District Courts in assessing patent invalidity. The Court further concluded that IPRs do not violate the Seventh Amendment, noting that “the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder…”.
PTAB Designates Two Decisions “Informative” Relating to 35 USC 325(d)
Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8). In this case, the PTAB announced six non-exclusive factors in considering whether to exercise its discretion to deny institution under § 325(d):
(a) the similarities and material differences between the asserted art and the prior art involved during examination;
(b) the cumulative nature of the asserted art and the prior art evaluated during examination;
(c) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
(d) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
(e) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and
(f) the extent to which additional evidence and facts presented in the Petition warrant reconsideration of the prior art or arguments.
Here, the PTAB denied institution based largely on its determination that the newly-cited reference was cumulative to that cited by the examiner, and the petition presented “only a nominally different combination of prior art.”
Kayak Software Corp. v. IBM Corp., CBM2016-00075 (PTAB Dec. 15, 2016) (Paper 16). This decision concerns the PTAB’s discretion to deny institution of a CBM Petition under 35 U.S.C. § 325(d). Here, the Petitioners used the exact combination of references previously applied by the Examiner. While the petition also introduced a new reference, the PTAB relied on § 325(d) in support of its decision not to institute, given “the same or substantially the same prior art or arguments previously were presented to the Office.” The PTAB noted several instances where it might be appropriate to institute trial over previously-presented prior art, including “where there are clear errors in the original prosecution,” “where the prior art at issue was only cursorily considered,” where there are “changed claim constructions,” and where there is “new evidence related to priority dates of the prior art or challenged patent.” The present case, however, provided no such circumstance.
USPTO May Intervene on an Appeal in Its Own Right
In Knowles Elecs. LLC v. Iancu, No. 2016-1954 (Fed. Cir. April 6, 2018), the CAFC affirmed a PTAB decision in an inter partes reexamination, which affirmed the examiner’s findings that the claims of U.S. Patent No. 8,018,049 were unpatentable as anticipated and obvious. The issue on appeal was whether the PTO has standing to intervene to defend its decision, even when the requestor has withdrawn from the case.
The majority held that the PTO Director has standing because “[t]he director of the USPTO has an unconditional statutory right to intervene in an appeal from a PTAB decision,” even when the petitioner withdraws on appeal.
In the News
New Director Andrei Iancu Takes Office
On February 8, 2018, the United States Patent and Trademark Office (USPTO) announced that Andrei Iancu began his first official day as Under Secretary of Commerce for Intellectual Property and Director of the USPTO. Mr. Iancu, who was nominated by President Trump last August, was unanimously confirmed by the U.S. Senate.
USPTO Issues Guidance on PTAB Proceedings in View of Sas Institute
On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings.
The guidance notes that, as required by the decision, the PTAB will institute as to all claims or none.
For pending trials in which a panel has instituted trial only on some of the challenge claims, the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.
Once the PTAB issues an order supplementing the institution decision, the PTAB expects the parties to meet and confer and ask the PTAB for additional briefing and/or adjustments to the trial schedule. The guidance indicates that, while the PTAB may act on its own, the parties should not expect additional briefing or schedule adjustments if not so requested.