OVERLAPPING PRIOR ART NOT GROUNDS FOR AUTOMATIC REJECTION OF FOLLOW-ON IPR PETITION
In Valeo North America, Inc., et al., v. Magna Electronics, Inc., IPR2014-01203, the PTAB granted the petition for IPR review rejecting the patent owner's argument that the petition should be denied under Section 325(d) on the grounds that the same or substantially the same prior art arguments were previously presented to the office. In this case, the petitioner previously filed a petition on the same claims including some of the same prior art but the follow-on petition was based on additional prior art. Rejecting the patent owner's arguments that the follow-on petition should be rejected, the board explained that even though there was overlap in the prior art between petitions, the arguments were not substantially the same and therefore, the board would not exercise its discretion under Section 325(d).
On Jan. 27, 2015, the USPTO issued a set of examples for analyzing claims under the abstract idea exception to subject matter patent eligibility. These examples supplement the Interim Guidance on Patent Subject Matter Eligibility issued by the USPTO in December, 2014. The Abstract Idea Examples illustrates four fact patterns with claims that are patent eligible and four fact patterns with claims that were found ineligible by the Federal Circuit. For full text, please see here.
PTAB denied a petitioner's motion to submit supplemental information after a patent owner's Preliminary Response finding that the request was not a permitted reply. VTech, Inc. v. Spherix Inc., No. IPR2014-01432 (PTAB Jan. 21, 2015). In this case, petitioner VTech filed an IPR petition challenging Spherix's patent. The patent owner Spherix filed a Preliminary Response contending that certain claims of a prior art cited by the petitioner could not constitute prior art because petitioner failed to establish whether the challenged claims were part of initial application or of a preliminary amendment. Petitioner requested authorization to file a motion to submit supplemental information and to file the patent prosecution history of the prior art to show that the cited claims were supported by original disclosure. In rejecting the request, the Board agreed with the patent owner that the "proposed submission  would amount to a reply to Spherix's Preliminary response on a substantive issue, and such a reply is not permitted" under 37 CFR 42.64 and 42.123.
Related AIA proceedings may result in reduction in the total deposition times. Petroleum Geo-Services Inc. v. WesternGeco LLC, Nos. IPR2014-00687; -00688; and -00689 (PTAB Jan. 21, 2015). Patent owner requested that each expert witness be made available for the full time of 13 hours under 37 CFR 42.53(c) for a total of 39 hours in the three AIA proceedings. Under 37 CFR 42.53(c), each deposition in a proceeding may include 7 hours of cross-exam, 4 hours of redirect and 2 hours of recross. In rejecting the patent owner's request, the PTAB concluded that the three patents at issue were continuations of the same application and therefore, a reasonable time under the rules was a total of 17 hours with 12 hours for cross, 3 hours of redirect and 2 hours for recross.
On January 20, 2015, PTAB found that a patent owner's exhibit, in the form of an expert report on patentability prepared for a related district court action, submitted with the Patent Owner Preliminary Response was impermissible "new" evidence under 37 CFR 42.107(c). B/E Aerospace, Inc. v. Mag Aerospace Indus., LLC, IPR2014-00510; -00511; -00513 (P.T.A.B. Jan. 20, 2015).
PTAB denied a petition for CBM review from a generic drug maker facing a Hatch-Waxman litigation on the grounds that the claims did not relate to a "financial product or service." Par Pharm., Inc. v. Jazz Pharm., Inc., Nos. CBM2014-00149, -0150, -0151 and -0153 (PTAB Jan. 13, 2015). Jazz Pharmaceuticals owns patents relating to methods of controlling access to a prescription drug which is prone to being abused. Par Pharma was sued by Jazz for infringement under Hatch-Waxman Act. Because invalidity challenges under 35 USC 101 cannot be raised in an IPR review, Par Pharma filed petitions for CBM review arguing that the claimed methods in the patents would be used in commerce, are financial in nature and involve running the business of mail order pharmacy that ships directly to consumers. Further, Par Pharma argued that PTO's classification of one of the patents as Class 705 (including "billing systems based on entered medical codes") and the examiner citing prior art billing systems during prosecution were grounds for CBM eligibility. Rejecting the petitioner's arguments, PTAB concluded the following: (1) method steps of contacting the patient's insurance company and flagging that the patient paid cash are steps performed for purposes of preventing abuse of a prescription drug, and not for purposes of verifying payment for insurance coverage of the drug; and (2) the actual claim language is the key feature to be considered and that the claims did not recite method steps used in billing or payment.
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