On Nov. 16, 2017, the USPTO issued new procedures for cases remanded from the Federal Circuit. The Standard Operating Procedure (SOP) provides guidance for panels in preparing for remand meetings and guidance to parties on remand procedures. The potential topics for such remand meetings may include the procedural history, issues on remand, any contemplated procedures for the proceedings on remand, and policy considerations. The SOP suggests parties in remanded trial cases are to contact the Board within 10 days and encourages parties to seek agreement on, among others, additional briefing, length of briefing, subject matter limitations on briefing, and briefing schedule. Full text is available here.
On October 24, 2017, the PTAB designated three opinions that address 35 USC 325(d) as informative opinions. See Unified Patents, Inc. v. Berman, IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10); Hospira, Inc. v. Genentech, Inc., IPR2017-00739 (PTAB July 27, 2017) (Paper 16); Cultec, Inc. v. Stormtech LLC, IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7). In Unified Patents, the Board denied institution because the petitioner asserted an obviousness combination that included a reference the examiner considered during prosecution and a second reference that was cumulative prior art. In Hospira, the Board denied institution because the examiner considered during prosecution the same arguments the petitioner raised regarding patent owner's claim to priority and examiner's determination was dispositive as to asserted grounds of unpatentability. In Cultec, the Board denied institution because (i) the examiner previously considered two of the asserted references; and (ii) two additional references relied upon were cumulative of prior art. Full text is available here.
USPTO released the PTAB statistics end of July 2017. The data reveals that a total of 7,306 petitions were filed under AIA and 92% of those petitions were IPRs. A total of 1,650 petitions were filed thus far this year and the majority of those petitions were in electrical/computer (60%), and mechanical and business methods (21%). Institution of the petitions was at an all time low of 63% with the highest rate of institution in the art area of mechanical and business methods (70%), closely followed by electrical/computer arts (69%). Fourteen percent (14%) of the petitions settled prior to institution and twenty-three percent (23%) after institution. In the 1,674 final written decisions, 65% of all instituted claims were found to be unpatentable.
Detailed report is available here.
On September 18, 2017, the PTAB designated an expanded panel's decision on follow-on petitions as informative. General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357 (PTAB Sept. 6, 2017) (Paper 19). In this case, General Plastic filed a first set of five petitions seeking IPR of two patents and each of the petitions were denied. Petitioner filed follow-on petitions against the same patents and PTAB denied institution based on 35 USC 314(a). Petitioner sought rehearing arguing that the follow-on petitions aren't limited to one petition per challenged patent under 35 USC 311 or 314; follow-on petitions should be analyzed under 35 USC 325(d) instead of 314(a); and that the PTAB misapplied the Nvidia decision.
In Nvidia, the Board enumerated the following factors that it considers when exercising its discretion to denying institution of an IPR: (1) whether the same petitioner previously filed a petition directed to the same claims of the same patent; (2) whether at the time of filing of the first petition the petitioner knew of the prior art asserted in the second petition or should have known of it; (3) whether at the time of filing of the second petition the petitioner already received the patent owner's preliminary response to the first petition or received the Board's decision on whether to institute review in the first petition; (4) the length of time that elapsed between the time the petitioner learned of the prior art asserted in the second petition and the filing of the second petition; (5) whether the petitioner provides adequate explanation for the time elapsed between the filings of multiple petitions directed to the same claims of the same patent; (6) the finite resources of the Board; and (7) the requirement under 35 USC 316(a)(1) to issue a final determination not later than 1 year after the date on which the Director notices institution of review. Nvidia Corp. v. Samsung Elec. Co., IPR2016-00134 (PTAB May 4, 2016). Applying these factors, the follow-on petitions were denied.
In its request for rehearing, the Petitioner argued the following: (a) Board ignored the overarching purpose of Section 6 of AIA; (b) Section 325(d) recognizes possibility of subsequent petitions; (c) section 325(d) controls over the more general statutory section 314(a); (d) denial of first-filed petition shouldn't be fatal where follow-on petitions attempt to cure a substantive and material defect in the first-filed; (e) Nvidia doesn't include a factor addressing patent owner's resources and PTAB erred in considering it. In finding the Petitioner's arguments as not persuasive, the expanded panel upheld the denial of follow-on petitions finding that the multiple, staggered petition filings were an inefficient use of the IPR process and the Board's resources, that six of the seven Nvidia factors weighed against institution, and that Petitioner failed to explain why a reasonably diligent search couldn't have uncovered the newly applied prior art or whether there were any changed circumstances that reasonably justified its new prior art searches and associated filing of follow-on petitions.
The PTAB designated its decision in Athena Automation Ltd. v. Husky Injection Moldings Systems Ltd., IPR2013-00290, Paper No. 18 (Oct. 25, 2013) as precedential. Announcing the designation, the PTO states that the "decision determines that the doctrine of assignor estoppel is not an exception to 35 USC 311(a), which allows 'a person who is not the owner of a patent' to file a petition for inter partes review."
Other IPR or CBM decisions that have been designated precedential thus far are:
Garmin Int'l, Inc. v. Cuozzo Speed Techs LLC, IPR2012-00001 (Mar. 5, 2013)
Oracle Corp. v. Click-to-Call Techs LP, IPR2013-00312 (Oct. 30, 2013)
MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040 (July 15, 2015)
Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Mar. 4, 2016)
LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937 (Sept. 17, 2015)
Westlake Services, LLC v. Credit Acceptance Corp., IPR2014-00176 (May 14, 2015)
Bloomberg Inc. v. Markets-Alert Pty Ltd., CBM2013-00005 (May 29, 2013)
SecureBuy LLC v. CardinalCommerce Corp., CBM2014-00035 (Apr. 25, 2014)
On July 31, 2017, the USPTO filed a supplemental brief with the Federal Circuit arguing that there is no Article III requirement of standing for the USPTO to intervene in an appeal of the Board's decision. Knowles Elec. LLC v. Matal, Fed. Cir., No. 2016-1954, 7/31/2017. According to the PTO, there is a controversy between the appellant and the PTO, the entity that took the decision to cancel previously patented claims, and the government's decision to intervene to pursue relief on behalf of the public.
On May 22, 2017, the U.S. Supreme Court granted certiorari in SAS Institute v. Lee, 825 F. 3d 1341 (Fed. Cir. 2016), cert granted, No. 16-969 (June 12, 2017) regarding partial institution of IPR. The Court presented the following question: Does 35 USC 318(a) require the PTAB to issue a final written decision as to every claim challenged by the petitioner or does it allow the Board to issue a final written decision with respect to patentability of only some of the patent claims challenged by the petitioner.
The U.S. Supreme Court, in a split decision, held that 35 USC 314(d) barred challenge to the USPTO's decision to institute an inter partes review, and that the USPTO's application of the "broadest reasonable construction" standard to interpret patent claims is a reasonable exercise of the rulemaking authority granted by Congress. In deciding the non-appealable nature of institution decisions, the Court looked at the plain language of the statute and determined that Congress was clear when drafting Section 314(d) that institution decisions are non-appealable. In affirming the BRI standard, the Court noted that the statute and legislative history did not suggest which claim construction standard Congress intended to be the "proper" standard but that the statute was clear in its express delegation of rulemaking authority to the USPTO, and the application of the BRI standard was a reasonable exercise of the USPTO's rulemaking authority.
The Federal Circuit upheld PTAB's finding of non-obviousness in an IPR for lack of motivation to combine references. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., No. 2015-1693 (Fed. Cir. May 9, 2016). In this case, IBS petitioned for IPR of Illumina's patent and the PTAB instituted review on obviousness grounds and found that IBS failed to prove the claims were obvious. In reaching its decision, PTAB refused to consider IBS' reply brief and accompanying expert declaration as new arguments in violation of 37 CFR 42.23(b) and 42.6(a)(3). The Federal Circuit affirmed the PTAB's decision finding that the PTAB did not err in refusing the reply brief because of the expedited nature of IPRs which places an obligation on the petitioners to maker their case in their petition to institute.
The U.S. Supreme Court granted cert to review PTAB's broadest reasonable interpretation (BRI) standard for claim construction in IPR proceedings. Cuozzo Speed Tech., LLC v. Lee, U.S. No. 15-446 (Jan. 15, 2016). The high court also agreed to consider reviewability of PTAB's decisions to institute where the Board does not confine itself to the art and grounds asserted in the petition. The questions presented by the Court are:
1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.