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Greenblum
& Bernstein, P.L.C. REEXAMINATION AND POST-GRANT PRACTICE GROUP NEWSLETTER keePingTABs No. 37 |
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May 2019
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In This Issue: · Taking Stock of
AIA Petitions · 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 As of
March 31, 2019, the number of AIA petitions climbed to 9,984. Inter Partes
Review (“IPR”) petitions continues to make up 92% of the total petitions,
while Covered Business Method (“CBM”)
petitions comprise 6% of the total and Post-Grant Review (“PGR”) petitions
make up the remaining 2%. 64% of the
petitions are directed to electrical/computer technologies, with Bio/Pharma
climbing to about 10% of the total petitions.
With
respect to settlements, the pre-institution settlement rate was around 12%
for FY18, and has jumped to 18% for FY19.
Post-institution settlements increased slightly from 24% to 28%, which
is almost as high as the FY15 29%. It
will be interesting to see if this rate continues for the remainder of
FY19. Recent
Developments In The Law
Federal Circuit Overruled Two Board Decisions For
Failing To Apply The Appropriate “Diligence” Standard The Federal Circuit overturned the Board in two
decisions decided weeks apart on the same issue, pointing out that the PTAB, in
both cases, applied too stringent a standard against the Patent Owner’s
assertions of diligence when swearing behind a prior art reference. See
Arctic Cat v. GEP Power Prods. Inc., (Fed.
Cir. Mar. 26, 2019) and ATI Techs. ULC v. Iancu, (Fed. Cir. Apr. 11, 2019). In Artic
Cat, the Boyd patent was asserted as prior art against the
patent-in-suit. The Boyd patent was
filed about 7 months before the patent-in-suit and the patent owner attempted
to remove the patent as a prior art reference by showing that its inventors
conceived of the claimed invention before Boyd’s filing date and then
diligently reduced the invention to practice. While the parties did not dispute the date
of conception, whether the inventors acted with the appropriate “diligence”
in reducing the invention to practice remained an issue. The PTAB concluded that the Patent Owner
failed to meet the diligence requirement.
The Federal
Circuit reversed, stating that the Board applied too rigid of a standard for
establishing diligence. The Court
noted that diligence need not be “perfectly
continuous – only reasonably continuous”. In the second case, ATI Techs, the Court found ATI’s claims patentable, contrary to
the PTAB decision, because the patent owner had established that it was
diligent in reducing the invention to practice during the relevant time
period. Again, the court criticized
the PTAB for applying the wrong standard for diligence. The court found the PTAB applied a “continuous
reasonable diligence standard” instead of the more appropriate standard of “reasonably
continuous diligence”. Taking both decisions together, the Court
appears to sending the PTAB a clear message to relax
the diligence standards when the patent owners are attempting to remove a
prior art reference by swearing behind.
The
Precedential Opinion Panel (POP) Issues Multiple Precedential and Informative
Decisions The POP has designated 9 prior-issued PTAB decisions that relate to AIA proceedings
as “precedential” over the past several weeks, which is quite a bit of
activity. I.
Precedential decisions Guidance regarding Motions To
Amend Lectrosonics, Inc. v. Zaxcom, Inc. Case
IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) This decision sets forth guidance directed
to submitting a motion to amend by either cancelling claims or substituting
claims. The decision points out that
Patent Owner does not bear the burden of persuasion to show the substitute
claims are patentable. For each challenged
claim, the patent owner is cautioned to submit only a “reasonable number” of
substitute claims. Whether the number
of proposed claims is reasonable is determined on a case-by-case basis. The
claims must, however, respond to a ground of unpatentability involved in the
trial and not enlarge the scope of the claims or introduce new mater. The motion
is limited to 25 pages and may include additional testimony and evidence. The
duty of candor continues to apply to the patent owner. Joinder of Parties Proppant Express Investments v. Oren
Technologies, Case IPR2018-00914 This decision provides guidance regarding
the following three issues relating to joinder of parties: 1.
Under 35 U.S.C. §
315(c) may a petitioner be joined to a proceeding in which it is already a
party? 2.
Does 35 U.S.C. § 315(c)
permit joinder of new issues into an existing proceeding? 3.
Does the existence of a
time bar under 35 U.S.C. § 315(b), or any other relevant facts, have any
impact on the first two questions? The Board has discretion based on 35 U.S.C. § 315 (c), (b) to Ø
allow a petitioner to join the proceeding in which it
is already a party and Ø allow a joinder of new
issues into existing proceeding. To balance all the considerations, the Board should exercise its discretion in
limited circumstances where fairness
requires it and to avoid undue prejudice to a party. Examples provided by the Board include
actions taken by a patent owner in a co-pending litigation such as the late
addition of newly asserted claims. Mistakes by Petitioner would generally not
be expected to implicate fairness and/or prejudice concerns. Limited Circumstanced To Grant Live Testimony K-40
Electronics, LLC v. Escort, Inc., Case IPR2013-00203 The Board sets forth
guidance for the rare case where live testimony is deemed necessary at the
oral hearing. In this case, the Board permitted
the live testimony of an inventor because it was crucial to establish prior
reduction to practice. The Board justified its decision in this case because
it was important to judge the demeanor of the witness and to assess
credibility. New Evidence Not Admissible At Oral Argument DePuy Synthes Products, Inc.
v. MEDIDEA, L.L.C., Case IPR2018-00315 Paper 29 (Jan. 23, 2019) The Board makes clear that new evidence will not be permitted at the oral argument. In this case, the PTAB denied a request for live testimony by the inventor because he had not previously presented any declaration evidence. Thus, his testimony would be new evidence and forbidden under the Trial Practice Guide. Grounds That Can Be Raised
Against Substitute Claims Amazon.com, Inc. v. Uniloc
Luxembourg S.A., Case IPR2017-00948, Paper 34 (Jan. 18, 2019) The Board reiterated that Patent
Owner does not have the burden to show the substitute claims are patentable,
including with respect to challenges based on 35 U.S.C. §101 (i.e, the claims are directed to subject matter that is
not eligible for patent protection.).
The Board concluded that, while petitioners can request cancellation of existing claims only
under Sections 102 and 103, there is no statutory limit to the grounds of
unpatentability that can be raised in response to proposed substitute claims
presented in a motion to amend. Thus,
in, in response to such a motion, the Board is not prevented from considering
unpatentability under other sections of the statute. How to Submit New Evidence On Rehearing Huawei Device Co., Ltd. v. Optis
Cellular Tech., LLC, Case IPR2018-00816, Paper 19 (PTAB Jan. 8, 2019), The Board addressed the procedures and standards for submitting new evidence on rehearing. The PTAB stated: “[i]deally, a party seeking to admit new evidence with a rehearing request would request a conference call with the Board prior to filing such a request so that it could argue ‘good cause’ exists for admitting the new evidence. Alternatively, a party may argue ‘good cause’ exists in the rehearing request itself.” Guidance on real-parties in interest The PTAB designated three additional
opinions as precedential relating to real-parties in interest: Adello Biologics LLC v. Amgen
Inc., Proppant Express Invs. LLC v.
Oren Techs., LLC and Ventex Co., Ltd. v. Columbia Sportswear N. Am., Inc. In Adello and Proppant, The PTAB made clear that, under 35 U.S.C. § 315(b), the
PTAB may “accept updated mandatory notices as long as the petition would not
have been time-barred”. In Ventex, the PTAB addressed additional
relationships that could create a real-party in
interest relationship. Specifically,
in Ventex, the PTAB concluded that structured,
pre-existing, contractual and well-established business dealings between
entities can create an RPI relationship and therefore concluded that the unnamed
party was a privy of the petitioner. |
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In the News Pilot Program for
Motion to Amend (MTA) The Patent
Office announced a pilot program directed to motions to amend in AIA
proceedings. A patent owner who files an MTA will have two options not previously available. First, a patent owner may
elect to receive preliminary guidance from the Board on its motion to amend.
Second, a patent owner may choose to file a revised motion to amend after
receiving petitioner’s opposition to the original motion to amend and/or
after receiving the PTAB’s preliminary guidance (if requested). If the patent owner does not elect either
option, the motion to amend practice continues unchanged. The pilot started March 15th and will last
for a year, unless sooner terminated. |