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On November 20, 2019, the USPTO published a new, consolidated edition of the AIA Trial Practice Guide. The updates include--institution of trial after SAS; use of sur-replies in lieu of observations; use of word counts; default protective order; sample scheduling order for derivation proceedings; and how parties may contact the Board to request an initial conference call.
Consolidated Edition is available here.
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On October 31, 2019, in a decision having far-reaching consequences to inter partes review, the Federal Circuit ruled that the appointment of judges to the Patent Trial and Appeal Board (PTAB) was unconstitutional. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140 (Fed. Cir. Oct. 31, 2019).
Full text of the opinion is available here. On March 18, 2019, the PTAB designated three decisions as precedential, two decisions relating to oral arguments and one decision on motion to amend.
Motion to Amend Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR2017-00948 (PTAB Jan. 18, 2019) (Paper 34): In the context of a motion to amend, Section 311(b) does not preclude Petitioner from raising, or the Board from considering, other grounds of unpatentability, including Section 101, as to substitute claims not yet part of a patent. The Board explained that Aqua Products shifted the burden from the patent owner on patentability in a motion to amend but did not foreclose analysis of whether substitute claims complied with Section 101. Oral Argument: The following two decisions are related to testimony at oral arguments. K-40 Electronics, LLC v. Escort, Inc., IPR2013-00203 (PTAB May 21, 2014) (Paper 34): Factors that may be considered in determining whether to permit live testimony. In granting the motion to present live testimony from the named inventor, the panel elucidated the following factors: (1) whether demeanor of witness may be critical to assessing credibility; (2) whether witness is principal fact witness; and (3) whether witness testimony may be case-dispositive DePuy Synthes Products, Inc. v. MEDIDEA, LLC, IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29): Testimony of an inventor at the oral hearing is considered new evidence, and not permitted, if a declaration from the inventor has not been previously provided. In referring to the Trial Practice Guide, the decision states that "[a] party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted." On March 7, 2019, PTAB designated a decision on motion to amend as precedential. Lectrosonics, Inc. v. Zaxcom, Inc., IPR2018-01129, 01130 (PTAB Feb. 25, 2019) (Paper 15): This decision sets forth the requirements and burden for a motion to amend. A motion to amend may cancel and/or propose substitute claims; the substitute claim will be treated as contingent and considered only if a preponderance of evidence establishes that the original claim was unpatentable. The burden of persuasion is on the petitioner to show proposed substitute claims are unpatentable and the Board determines unpatentability by preponderance of the evidence based on the entire record. Motion may propose reasonable number of substitute claims and must explain if more than one substitute claim per challenged claim. Patent owner must respond to ground of unpatentability involved in the trial. Motion may not present substitute claims that enlarge the scope or introduce new matter. Motion must include a claim listing reproducing each proposed substitute claim and the motion, as well as any opposition, is limited to 25 pages while reply and sur-reply are limited to 12 pages. All parties have a duty of candor including patent owner's duty to disclose any material to patentability of substitute claims. The decisions are available here. On March 3, 2019, the Federal Circuit reversed the PTAB's IPR decision that held the challenged claims as obvious. Personal Web Tech., LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. March 8, 2019). Apple filed an IPR petition against US7,802,310 asserting multiple grounds of unpatentability. Board issued a final written decision concluding that Apple had demonstrated by a preponderance of evidence that the challenged claims were obvious in view of prior art references. The '310 patent is directed to a system that uses content-based identifiers for various purposes in data processing systems.
Full text of the opinion is available here. A Federal Circuit panel consisting of Judges Chen, Mayer and Bryson ruled that the method claims directed to rules for playing a dice game is patent-ineligible subject matter where the only arguable inventive concept relates to the dice markings. In re Marco Guldenaar Holding B.V., No. 2017-2465 (Fed. Cir. Dec. 28, 2018). Marco Guldenaar Holding B.V. filed a patent application directed to dice games intended to be played in casinos. Claim 1 recited, in part, a method of playing a dice game comprising "providing a set of dice, the set of dice comprising a first die, a second die, and a third die, wherein only a single face of the first die has a first die marking, wherein only two faces of the second die have an identical second die marking, and wherein only three faces of the third die have an identical third die marking." Examiner rejected claim 1, and other claims, as directed to an abstract idea of rules for playing a game which is a "method of organizing human activities." The claims were also rejected as obvious over matters old and well known to dice games applying the printed matter doctrine. The Board affirmed the rejections and the applicant appealed.
In affirming the Board's decision, the court reasoned that the claimed method of playing a dice game including placing wagers on whether certain die faces will appear face up is directed to a method of conducting a wagering game that was held patent-ineligible in In re Smith, 815 F.3d 816 (Fed. Cir. 2016). In dismissing the appellant's argument that the die markings on one, two, or three die faces amounts to "significantly more" than an abstract idea, the Court held that the markings constitute printed matter that falls outside the scope of Section 101 and the method of playing a dice game does not recite an inventive concept sufficient to transform the claimed subject matter patent-eligible. The alternative arguments based on obviousness were not reviewed by the court as the rejection of the appealed claims were affirmed under Section 101. Full text of the opinion is available here. Effective 11/13/18, the PTAB's claim construction standard changes to Phillips from the broadest reasonable interpretation (BRI) for all IPR, PGR and CBM petitions filed on or after 11/13/18.
Federal Circuit affirmed the PTAB's denial of a motion by Saint Regis Mohawk tribe to dismiss, on the basis of sovereign immunity, an IPR proceeding against patents that were assigned to the Tribe by Allergan. St. Regis Mohawk Tribe v. Mylan Pharm. Inc., Nos. 18-1638, -1639 (July 20, 2018). Allergan, owner of patents relating to Restasis product for alleviating symptoms of chronic dry eye, sued several generics including Mylan in E.D. Texas. Mylan filed an IPR challenging the patents and the PTAB instituted the IPRs. Prior to a scheduled oral hearing Allergan entered into an agreement transferring the patents to the Tribe. The Tribe then moved to terminate the IPRs asserting tribal sovereign immunity and the Board denied the motion.
On appeal, the Federal Circuit held that sovereign immunity cannot be asserted in IPRs. In affirming the Board's denials, the Court reasoned that IPR is neither a judicial proceeding instituted by a private party or an enforcement action brought by the federal government. According to the court, the "immunity does not apply where the federal government acting through an agency engages in an investigative action or pursues an adjudicatory agency action." Full text of the opinion is available here. On May 8, 2018, the USPTO announced its proposed rulemaking for claim construction standard in PTAB proceedings. The PTO proposed to amend the rules to require the PTAB to interpret the claims in IPR/PGR/CBM proceedings using the same standard as applied in federal district courts and the USITC, and to consider any prior claim construction determination concerning a term of involved claim in a civil action or ITC proceeding that is timely made in the PTAB proceeding. The proposed changes would replace the BRI standard with the claim construction standard used in federal district courts and would be consistent with the PTO's current approach for interpreting claims in an expired patent. Full text of the notice is available here.
On April 26, 2018, USPTO issued guidance on the impact of the Supreme Court's decision in SAS Institute Inc. v. Iancu on AIA trial proceedings. According to the guidance, PTAB will proceed as follows: (1) it will institute as to all claims or none; if it institutes a trial, it will institute on all challenges raised in the petition; (2) for pending trials in which panel instituted trial on all challenges raised in the petition, panel will continue with the proceeding in normal course; (3) for pending trial in which a panel instituted trial only on some of the challenges raised in the petition, panel will issue a supplemental order on all challenges raised in the petition, and take action to manage trial proceeding including permitting additional time, briefing, discovery and/or oral argument, depending on the stage of the proceeding.
Full text is available here. supreme court rules ipr constitutional and requires ptab to address every challenged claim4/24/2018 On April 24, 2018, the U.S. Supreme Court issued its decisions in two much-awaited patent cases involving inter partes review. In Oil States, in a 7-2 decision, the Court held that inter partes reviews were constitutional under the public-rights doctrine. Oil States Energy Svcs., LLC v. Greene's Energy Group, LLC, 584 U.S. ___ (2018). In SAS, in a 5-4 decision, the Court held that the PTAB must decide the patentability of all the claims the petitioner has challenged in an inter partes review. SAS Inst. Inc. v. Iancu, 584 U.S. ___ (2018).
Oil States Energy Svcs., LLC v. Greene's Energy Group, LLC In Oil States, petitioner Oil States Energy Services, LLC obtained a patent relating to technology for protecting wellhead equipment used in hydraulic fracturing. Oil States sued Greene's Energy Group, LLC for infringement and Greene's Energy challenged the validity in district court and also filed an IPR petition. The district court issued a claim construction order favoring Oil States while the PTAB concluded that the patented claims were invalid. Oil States appealed to the Federal Circuit challenging the PTAB decision and the constitutionality of IPR. While the appeal was pending, the Federal Circuit rejected the constitutionality of IPR in a separate case and summarily affirmed the PTAB's decision involving Oil States. On appeal, the U.S. Supreme Court held that the inter partes review does not violate Article III. Writing for the majority, Justice Thomas reasoned that IPR falls squarely within the public-rights doctrine and that patents are "public franchises." According to the Court, IPR involves the same basic matter as the grant of a patent subject to the Board's authority and that the Court has recognized that franchises can be qualified in this manner. Addressing the petitioner's arguments, the Court found that the three decision recognizing patent rights are private property were decided under a different statutory scheme, historical practice where courts have adjudicated patent validity does not foreclose Congress from assigning matters governed by public-rights doctrine to the Executive, and that the similarities between the various procedures used in IPR and in courts does not lead to the conclusion that IPR violates Article III. The Court went on to to say that the holding is narrow and does not address whether patents are property for the purposes of Due Process Clause or the Takings Clause. In his dissent, Justice Gorsuch joined by Chief Justice Roberts, stated that the decision signaled a retreat from Article III's guarantees that "suits at the common law, or in equity, or admiralty" must be heard by independent judges. Full text of the Oil States opinion is available here. SAS Institute Inc. v. Iancu In SAS, petitioner SAS Institute sought an inter partes review of ComplementSoft's software patent alleging that all 16 of the claims were unpatentable. The Director instituted review of only claims 1 and 3-10 and denied review on the rest. At the end of litigaton, PTAB issued a final written decision finding claims 1, 3 and 5-10 to be unpatentable while upholding claim 4. PTAB's decision did not address the remaining claims on which the Director had refused review. SAS appealed to the Federal Circuit which affirmed the Board's decision and dismissed SAS's argument that 35 USC 318(a) required the Board to decide the patentability of every challenged claim in the petition. SAS filed a writ of certiorari. On appeal, the U.S. Supreme Court, in a 5-4 decision, held that the Patent Office must decide the patentability of all of the claims the petitioner has challenged in an IPR instituted by the PTAB. Full text of the SAS opinion is available here. |
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.
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