|
|
|
Greenblum
& Bernstein, P.L.C. REEXAMINATION AND POST-GRANT PRACTICE GROUP NEWSLETTER keePingTABs No. 32 |
|
May 2018
|
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 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 IPR filings through April 30,
2018. Please click here for
the latest G&B spreadsheet reflecting all CBM filings through April 30,
2018. 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 NEW DIRE 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. In his new role, Mr. Iancu will provide leadership and oversight to one of the
largest intellectual property offices in the world, with over 12,000
employees and an annual budget of over $3 billion. 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. |
|
|