By Scott A. McKeown
| February 10, 2017

Article III Standing for PTAB Appeals Once Again Revisited by Federal Circuit


Last month, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings in Phigenix, Inc. v. ImmunoGen, Inc. (here)  The Phigenix decision follows an earlier decisionConsumer Watchdog v. Wisconsin Alumni Research Foundation (Warf) finding the same Article III standing requirement for the now defunct inter partes patent reexamination. 

Yesterday, in PPG Industries, Inc., v. Valspar Sourcing, Inc., the Federal Circuit again addressed the issue of standing in appeals from the Patent Trial and Appeal Board (PTAB). At issue in these consolidated appeals was whether PPG Industries, Inc. (“PPG”) had standing to appeal the PTAB’s decisions in two inter partes reexaminations where the patent owner Valspar Sourcing, Inc. (“Valspar”) was the prevailing party. Showcased in this appeal is evidence deemed to satisfy Article III standing for an appeal from the PTAB.
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By Scott A. McKeown
| February 9, 2017

Recalibration of Venue Could Change Face of Patent Litigation


As most are well aware, the patent venue statute, 28 U.S.C. § 1400(b), provides that patent infringement actions “may be brought in the judicial district where the defendant resides . . . .” The statute governing “[v]enue generally,” 28 U.S.C. § 1391, has long contained a subsection (c) that, where applicable, deems a corporate entity to reside in multiple judicial districts. In Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), the Supreme Court held that §1400(b) is not to be supplemented by § 1391(c), and that as applied to corporate entities, the phrase “where the defendant resides” in § 1400(b) “mean[s] the state of incorporation only.” Id. at 226. The Court’s opinion concluded: “We hold that 28 U.S.C. §1400(b) is the sole and exclusive provision controlling venue in patent infringement actions, and that it is not to be supplemented by the provisions of 28 U.S.C. § 1391(c).” Id. at 229.

In the dispute before the High Court in TC Heartland v. LLC D/B/A Heartland Food Products Group V. Kraft Foods Group Brands LLC., the court will consider the argument that Federal Circuit precedent contradicts Fourco.  The decision in TC Heartland could have a significant impact on patent litigation in this country given the disproportionate share of such cases now in Texas courts.

The petitioner briefing and amicus filings are now in, including the one I filed on behalf of Unified Patents.
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By Scott A. McKeown
| February 8, 2017

Inaugural PTAB Bar Association Conference & Much More


For those seeking some PTAB related discussion/CLE in the months ahead, there are a multitude of upcoming programs.

March 1st-3rd: The Inaugural Conference of the PTAB Bar Association will be held in Washington D.C. (here) This program will offer a boot-camp for new practitioners on Wednesday March 1, followed by a full day program on Thursday, March 2nd, and a half day program on Friday, March 3rd. Don't miss the uniquely focused discussion of PTAB ethics and potential inequitable conduct risks on Friday.

March 7th: - Best Practices for Proving a Document is a Printed Publication in an Appeal or AIA Trial (PTAB -Boardside Chat)

March 9th-10th: The UTCLE Advanced Patent Law Institute will be held at the USPTO's Alexandria campus. (here) This program will offer a broad range of patent related topics, including extensive discussions of PTAB trial practice and the impact of recent Federal Circuit Decisions.

March 10th: For those on the west coast, the Washington State Bar Association will hold its 22nd Annual Intellectual Property Institute in Seattle. (here)  This program will also offer a broad range of IP related topics, including a discussion of best practices for PTAB trials.

March 21st: MIP U.S. Patent Forum 2017 will be held in Palo Alto (here). This program offers a full day program focusing on AIA trial practices.

May 10th-11th: American Conference Institute presents its Third Annual Post-Grant PTO Proceedings in New York City (here). This two-day event will cover a variety of AIA Trial Proceeding topics.

May 16, 2017: MIP PTAB Forum 2017 will be held in New York City. (here)  This is a full-day forum on PTAB trial practices.

I hope to see you at one of these upcoming events.

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By Scott A. McKeown
| January 25, 2017

Burden of Production on Article III Standing to Bolster 315(b) Disputes at CAFC?


Two weeks back, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings. Phigenix, Inc. v. ImmunoGen, Inc. (here)  The Phigenix decision follows an earlier decision, Consumer Watchdog v. Wisconsin Alumni Research Foundation (Warf) finding the same Article III standing requirement for the now defunct inter partes patent reexamination. Thus, Phigenix was expected given that differences in AIA trial proceedings and patent reexamination are inconsequential with respect to the standing debate (and in virtually all other respects).

While Phigenix is well on the radar of public interest groups and like organizations that seek to institute an AIA trial proceeding on patents of interest, the impact of this decision could complicate appeals for certain operating companies should the en banc decision in Wifi One play out as expected.
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By Scott A. McKeown
| January 12, 2017

315(e)(2) Estoppel Application Less Than Straightforward


IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final written decision . . . may not assert . . . in a civil action . . . that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added).  After Last year, in Shaw Industries Group, Inc. v. Auomated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016) the interpretation of "reasonably could have raised during that inter partes review" has been unnecessarily complicated.

Shaw had petitioned for a writ of mandamus instructing the PTO to institute IPR based on a ground the Board previously denied as redundant.  Id. at 1299.  To satisfy one of three requirements for such a writ, Shaw argued that it had no other adequate means to attain the desired relief because it had brought that ground before the PTO and thus may be estopped from arguing the ground in any future proceeding.  Id.  However, the Court found no reason for Shaw to fear estoppel, holding that “[t]he plain language of the statute prohibits the application of estoppel under these circumstances.”  Id. at 1300.  The Court’s logic was that an IPR does not “begin until it is instituted.”   Id.  According to the Court, under Section 315 and due to its term “during that inter partes review,” an IPR petitioner could not have raised (or have reasonably raised) any ground in a petition for which the PTAB did not institute trial.  Shaw’s proffered invalidity ground had been denied and thus never entered the IPR; therefore, Shaw would not be estopped from its new invalidity argument.  The take-away from Shaw is that Section 315(e) does not estop an IPR petitioner from challenging a patent based on petitioned but non-instituted grounds of unpatentability.

The legislative intent behind 315(e)(2) is quite the contrary.
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