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Greenblum
& Bernstein, P.L.C. REEXAMINATION AND POST-GRANT PRACTICE GROUP NEWSLETTER keePingTABs No. 33 |
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August 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) |
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.”[1]
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. |
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