Inter Partes Review
By Scott A. McKeown
| May 23, 2017
PTAB Trial Estoppel Demystified in EDTX?

Recent Decision out of EDTX First to Get PTAB Estoppel Provision Correct


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).

As previously discussed, IPR estoppel has been unnecessarily complicated by the PTAB's redundancy practice as discussed in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., 817 F.3d 1293 (Fed. Cir. 2016

For example, the district court in Intellectual Ventures I LLC v. Toshiba Corp., Civ. No. 13-453, explained that, based on Shaw, it was necessary to interpret the scope of estoppel very narrowly, only applying estoppel to prior art or publications actually instituted in the IPR.  As this decision contradicts the plain language of the estoppel statute, it has been heavily criticized as too literal a reading of Shaw.  More recently, several other district courts have taken a more expansive view of Shaw.  But, in my opinion the first district to actually get it right, is, surprisingly, this week's venue whipping boy— the Eastern District of Texas (EDTX).
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By Scott A. McKeown
| May 22, 2017
Eliminating Partial PTAB Institutions Will Undermine Trial Practice

"All or Nothing" PTAB Institution Practice Coming Soon?

Today, the Supreme Court granted certiorari in SAS Institute Inc., v. ComplemenSoft LLC.   As previously explained, SAS argues that partial PTAB trial institutions are inconsistent with the controlling statutes of the America Invents Act (AIA).  That is, if the PTAB finds that at least one claim is demonstrated as likely unpatentable, the PTAB should institute trial for all petitioned claims.  

The dispute stems from an IPR filing of SAS in which it challenged all sixteen claims of ComplementSoft’s 7,110,936 patent.  Trial was instituted for claims 1 and 3-10, but claims 2 and 11-16 were denied institution.  On appeal to the Federal Circuit, SAS argued that it was inefficient to institute on only a subset of claims, and that the controlling rule authorizing partial institution (37 C.F.R. § 42.108(a) was in direct conflict with statutes 35 U.S.C. §§ 314(a)/318(a).  The Federal Circuit disagreed.

Basically, SAS is seeking an end-run around the 314(d) appeal bar.  In other words, had the PTAB simply moved forward with trial on all claims, SAS would have been able to appeal any unfavorable decision on claims 2 and 11-16 (presumably would have been found not unpatentable at the close of trial) as part of its appeal from the Final Written Decision (FWD).  As it currently stands, 314(d) prevents the appeal of claims 2 and 11-16 since they were denied institution. 

Setting aside for another day the academic debate on the merits, should the high court accept SAS's argument, Patentees will be significantly prejudiced.

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By Scott A. McKeown
| May 18, 2017
Constitutional Challenges to PTAB Another Dead End

Public vs. Private Rights: Another PTAB Distraction


We all remember the "Great BRI Debate" that was Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2143–44 (2016). PTAB critics argued that the Board's "broadest" claim construction rubric was unfairly stretching claims to embrace prior art — resulting in inevitable invalidity determinations. And that since the PTAB was now in the business of litigation, they must follow litigation claim construction practices deemed more favorable to patent holders (especially since the PTAB amendment process, the justification for BRI, was argued as illusory).  

In reality, the difference between BRI and the district court Philips practices is the label used to reference each. Both constructions apply the ordinary and customary meaning of a claim term at the time of the invention from the perspective of one of skill in the art. The difference in outcomes is a simple reflection of expert agency's technical insight, not a meaningful difference in claim construction frameworks. For this reason, and many others, Cuozzo failed.

Attempts to derail PTAB trial proceedings still persist some 5 years into its life. These attempts now include recycling failed constitutional arguments against Article I adjudication practices.

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By Scott A. McKeown
| May 4, 2017
WiFi One Argued at Federal Circuit

"Under This Section" a Limitation on the Scope of 314(d) Appeal Bar?


In today's en banc argument (audio here) the Federal Circuit considered the whether it should overrule Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) and hold that judicial review is available for a patent owner to challenge the PTO’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.

As expected much of the debate focused on whether or not the "under this section" language of 314(d) limited the appeal bar to solely patentability matters (i.e., 314(a); or, whether that phrase swept in related sections, and how the language "less closely related statutes" of Cuozzo impacted the analysis.  Judge Chen and others appeared to find the "under this section" language must have some meaning, and that it must be a restriction on the appeal bar— thereby additionally freeing up questions of RPI/privity for review.  Others on the Court seemed to respond favorably to the government's position that "under this section," in the administrative law context, provided a more expansive bar that swept in all aspects of AIA trial institution.

Stay tuned.

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By Scott A. McKeown
| April 17, 2017
Denied Petition Grounds May Be Relevant to PTAB Trial

CAFC Emphasizes that Art of Denied Petition Grounds Can Come Back to Haunt Patentees


It is not uncommon for an AIA Trial Proceeding, such as Inter Partes Review (IPR), to be instituted on a subset of unpatentability grounds presented in the petition. For example, IPR is currently granted on a claim-by-claim basis.  That is, petition grounds can be accepted or denied based upon the Patent Trial & Appeal Board's (PTAB) conclusions as to whether a reasonable likelihood of prevailing is shown for a given patent claim.

In the case of partial PTAB trial institutions, Patentees will often employ a strategy to formally object to the aspects of the preliminary record that include reference to prior art of the denied grounds.  The thinking here is that the objection will preserve the right to exclude this seemingly irrelevant art from the record at the close of trial. 37 C.F.R. § 42.64. Yet, art of a denied petition ground can be (and usually is) highly relevant at trial.

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By Scott A. McKeown
| April 11, 2017
ITC Shows Interest in PTAB Record

Technical Findings of PTAB Increasingly Leveraged in Parallel Court Proceedings


Patent challenge proceedings of the USPTO's Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court or International Trade Commission (ITC) is left to make the ultimate resolution on validity. Yet, as I discussed last year, closed AIA trial records are being leveraged by the courts to aid in resolving a number of disputed issues — from claim construction to summary judgement invalidity determinations.

More recently, the International Trade Commission (ITC) has followed suit.
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By Scott A. McKeown
| April 7, 2017
USPTO Soliciting Ideas on PTAB Procedural Reform

PTAB Procedural Reform Initiative


Today the USPTO announced its PTAB Procedural Reform Inititative. The initiative seeks feedback on the nearly five years of historical data and user experiences to further shape and improve Patent Trial and Appeal Board (PTAB) trial proceedings, particularly inter partes review (IPR) proceedings. The purpose of the initiative is to ensure that the proceedings are as effective and fair as possible within the USPTO’s congressional mandate to provide administrative review of the patentability of patent claims after they issue.
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By Scott A. McKeown
| April 6, 2017
En Banc Denial in Unwired Planet Previews WiFi One Debate

Excess of Jurisdiction vs. Agency Discretion


Earlier this week, the CAFC denied en banc rehearing in Google v. Unwired Planet.  While the denial was largely expected, Judge Hughes' concurrence foreshadows the debate to come in WiFi One.  

That debate, at least for Judge Hughes, is separating matters of agency discretion from questions of constitutionality and/or ultimate statutory authority.

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By Scott A. McKeown
| March 23, 2017
PTAB Preliminary Response Evidence Remains Unpopular

Preliminary Responses Accompanied by Declaration Evidence: Updated Results 


Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints that patentees were disadvantaged by previous rules precluding such evidence from accompanying a preliminary response to the petition. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence.  I had my doubts.

Now that we are approaching a year removed from the rule modification, some updated results.  

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By Scott A. McKeown
| March 20, 2017
Rehearing Pendency in AIA Trial Proceedings

How Long is the Rehearing Wait?


A Petition for Rehearing may be filed in an AIA Trial Proceeding to challenge an Institution Decisions (ID) or a Final Written Decision (FWD) of the Patent Trial & Appeal Board (PTAB). Of course, a successful Petition for Rehearing is a rare occurrence. Fewer than 5% of cases to date have seen a successful Petition for Rehearing.  

A Petition for Rehearing pursued after an ID is often deemed to have the longest odds of success given the 314(d) bar to appealing such decisions (now pending review in WiFi One). On the other hand, given the ultimate appeal of FWDs to the Federal Circuit, it may be that such filings inherently enjoy closer scrutiny, and hence, slightly better odds of success.

In any event, both patentees and petitioners alike sometimes find it necessary to pursue rehearing for any number of strategic goals. But, given the lack of a mandated deadline for such decisions, the question becomes: "How Long is the Wait?"

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