Greenblum & Bernstein, P.L.C.
REEXAMINATION AND POST-GRANT
PRACTICE GROUP NEWSLETTER
keePingTABs No. 37
In This Issue:
· Taking Stock of AIA Petitions
· Developments in the Law
· In the News
Jill M. Browning
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.
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.