Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePingTABs No. 33
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
The PTAB reports a total of 8,747 AIA petitions filed through June 30, 2018. Of that number, 92% or 8,072 are Inter Partes Review (“IPR”) petitions; 554 Covered Business Method petitions and 127 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.
Recent Developments In the Law
Federal Circuit: Tribal Sovereign Immunity Does Not Apply in IPRs
On Friday, July 20, 2018, the Federal Circuit, in a precedential opinion, affirmed the PTAB’s decision that tribal sovereign immunity does not apply in IPR proceedings and that the U.S. Patent & Trademark Office (“USPTO” or “the Office”) may decide the validity of the patents Allergan assigned to the St. Regis Mohawk tribe after the patents were challenged by generic drug companies.
The CAFC opined that the Director, a politically appointed executive branch official, and not a private party, is who ultimately decides whether to proceed against a sovereign party. Further, the CAFC noted that IPR proceedings may continue, once begun, even in the absence of either the petitioner or the patent owner. Finally, the CAFC pointed to the differences between the Federal Rules of Civil Procedure and the rules governing IPR proceedings as a basis for not applying sovereign immunity in the IPR setting including the ability of plaintiff to make significant amendments to a complaint in civil litigation (petitioner may only make clerical or typographical corrections to petitions); a patent owner’s ability to amend its patent claims during IPR proceedings (unavailable in civil litigation); and the limited discovery available in IPR proceedings.
Federal Circuit May Retain Jurisdiction to Decide Pre-SAS Appeals Where Less Than All Claims Were Instituted
In PGS Geophysical AS v. Iancu, Nos. 2016-2470, -2472, -2474 (Fed. Cir. June 7, 2018), the Federal Circuit held that it may retain jurisdiction over IPR appeals even where the Board did not institute on all claims challenged in the petition, as required by the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, and that it need not remand for a final written decision on non-instituted claims in some cases. The court affirmed the PTAB’s obviousness finding for the claims on appeal.
The Federal Circuit has, however, remanded several cases back to the PTAB where the PTAB did not, in fact, institute on all claims challenged.
Section 325(d) Can Be Applied To Non-Prior Art Arguments of Unpatentability in CBM/PGR Proceedings
In Fiserv, Inc., v. Mirror Imaging, the Board considered Patent Owner’s argument that instituting a second CBM patent review, filed three months after the initial petition by another party, would unnecessarily duplicate the process of reaching the same 35 U.S.C. § 101 legal issue.
The Board found that the second petition made “the same or substantially the same arguments regarding the §101 challenge” and, as such, could be rejected under 35 U.S.C. §325(d), which permits the PTAB discretion to deny the petition. The PTAB noted that Fiserv failed to indicate how its petition was different from the first petition (already instituted) and also that the petitioner did not seek to join the first proceeding. Accordingly, the PTAB “exercised its discretion and declined to institute trial on the second petition.
On July 10, 2018, PTAB Designates The Following Five Decisions “Informative” (three on IPR practice; two in ex parte decisions)
IPR Practice Informative Decisions
Ariosa Diagnostics v. Isis Innovation Ltd., IPR2012-00022, Paper 55 (PTAB Aug. 7, 2013). Here, the Board set forth guidance on taking foreign depositions, including the location of the deposition and the language in which it is to be conducted. While the PTAB recognized that the parties are in the best position to determine the deposition procedures, it provides 12 guidelines to assist with issues that may arise, including those issues that may arise when using interpreters.
Argentum Pharm. LLC v. Alcon Research, Ltd., IPR2017-01053, Paper 27 (PTAB Jan. 19, 2018). Here, the Board analyzes the ‘good cause’ standard for protective orders recited in 38 CFR §423.54(a), which states that the PTAB “may, for good cause, issue an order to protect a party” from disclosing its confidential information by “sealing” the information so that the public cannot gain access. In this case, the PTAB denied the request for a protective order, noting the following 4 factor test to apply when evaluating the motions: “(1) the information sought to be sealed is truly confidential, (2) a concrete harm would result upon public disclosure, (3) there exists a genuine need to rely in the trial on the specific information sought to be sealed, and (4), on balance, an interest in maintaining confidentiality outweighs the strong public interest in having an open record.”
Colas Sols. Inc. v. Blacklidge Emulsions, Inc., IPR2018-00242, Paper 9 (PTAB Feb. 27, 2018). The PTAB ruled that § 315 bars institution of an IPR where the petitioner filed a DJ action directed to the same patent, before filing the IPR petition. The PTAB further found that a motion for joinder would not exempt the petitioner from the §315(a)(1) statutory bar, given that this statute does not provide for the joinder exemption (which is explicitly provided for by the language in § 315(b), indicating that the time bar “shall not apply to a request for joinder under subsection (c).”
Ex parte PTAB Informative Decisions
Ex parte Ditzik, 2018-000087 (PTAB Mar. 2, 2018). Here, the Board upheld an examiner’s use of issue preclusion from a related invalidity finding issued in a federal District Court against the appellant. While the PTAB found many of the appellant’s arguments to be accurate (e.g., the standards of proof are different; the claims are not the same in both proceedings; Appellant provided new evidence and incorrect trial testimony led to the district court/CAFC reaching a different result; the District Court ruling is not final; the PTO was not a party to the District Court proceeding), it did not find them persuasive.
The PTAB, in addressing Appellant’s arguments, noted that the Supreme Court permitted issue preclusion to apply to an issue that is before a court and an administrative agency. Further, in this case, while the claim language differed, the issue itself (relating to written description) was the same in both forums. The PTAB indicated that potential rebuttals to issue preclusion could occur when (i) the standard applied in the prior decision might have caused a different outcome; (ii) the new evidence could be shown not to be available at the time of the first proceeding; or (iii) the appellant did not have a “full and fair opportunity” to counter the positions/evidence in the first proceeding.
Ex parte Jung, 2016-008290 (PTAB Mar. 22, 2017). Appellant challenged the examiner’s interpretation of the claim language “at least one of a connection branch and a contents connection list” as meaning one OR the other, but not both. The PTAB reversed the Examiner based on SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870 (Fed. Cir. 2004), which found that the plain meaning of ‘at least one of A and B’ is the conjunctive phrase ‘at least one of A and at least one of B.” The PTAB explained that this meaning could be rebutted by showing that the other claims, specification, or the prosecution history necessitated a broader interpretation.
In the News
PTAB Designates New Decision To Guide Motions to Amend
In view of the Federal Circuit Decision in Aqua Products, the PTAB has de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015) and de-designated as informative Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013). In their place, the PTAB has designated as “informative” Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00082, -00084 (PTAB Apr. 25, 2018) (Paper 13).
PTAB Releases Frequently Asked Questions about SAS
On June 5, 2018, the PTAB released a Frequently Asked Questions and Answers document with the Q and A’s grouped into the following 6 categories:
The PTAB will update these FAQs over time, in view of questions received.