Patent Trial & Appeal Board
By Scott A. McKeown
| February 22, 2017
Is In re Packard the Correct Standard for AIA Trials?

In re Packard Inextricably Linked to Patent Examination Practices?


Back in 2014, the Federal Circuit determined the standard for a USPTO indefiniteness analysis in In re Packard (here). This standard was more deferential to the agency as compared to the district court's "reasonable certainty" standard later enunciated in Nautilus v, Biosig Instruments Inc.  When Packard issued, I questioned whether that standard could be argued to apply to post-grant proceedings. This was because the Court's determination in Packard was deeply rooted in patent examination practices.

More recently, the Patent Trial & Appeal Board (PTAB) has adopted Packard in some of its decisions analyzing claims under 35 U.S.C. § 112 (e.g., PGR20015-00018, Telebrands Corp. v. Tinnus Enterprises LLC). But, decisions of the Federal Circuit since Packard, have made clear that grounds of unpatentability in AIA trial proceedings are not akin to rejections in patent examination.  As explained by the court in In re Magnum Oil Tools Int’l, Ltd. the prima facie procedural mechanisms of patent examination do not comport with proper AIA trial practices.

Will the CAFC pull the rug out from under the PTAB's application of Packard in AIA trails?

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By Scott A. McKeown
| February 10, 2017
Article III Standing Found for PTAB Appeal Where Threat of Suit

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
| January 25, 2017
Phigenix/WiFi a Double Bind for Future PTAB Privity Disputes?

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
PTAB Redundant Ground Practice Complicating Estoppel

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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By Scott A. McKeown
| January 11, 2017
Chevron Deference for AIA Trial Matters Trumped?

Key Administrative Law Doctrine on the Congressional Chopping Block & Onerous Rule Hurdles


As pointed out in yesterday's Top 5 PTAB Trial Developments of 2016, the Administrative Procedure Act (APA) is the constitution of Article I courts. In its 70 years of existence, the APA has never been modified. Yet, over time, common law developments have been intermingled with APA considerations — none more prominent than the "Chevron Doctrine." Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., 467 U.S. 837 (1984). This judge made doctrine stands for the proposition that where there is silence or ambiguity in a statute conveying agency authority or action, that courts should apply deference to reasonable agency interpretations. Critics of Chevron argue that it cannot be reconciled with the APA, and has led to a highly inconsistent body of case law.

Politicians argue that Chevron allows regulatory agencies to create law independent of judicial review, and leads to an unwarranted expansion of costly bureaucracy.

Today, the House will begin to consider HR. 5, which not only proposes to eliminate the Chevron Doctrine by amending the APA to expressly exclude it, but also proposes to heap a boatload of additional regulatory roadblocks to the promulgation of agency rules. 
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By Scott A. McKeown
| January 6, 2017
What to Do With 112 Issues in IPR?

Moving Forward on Indefinite Claims Could Haunt Petitioners


Often times when preparing an Inter Partes Review (IPR) petition, a claim is encountered that may be of an indeterminate scope under 35 U.S.C. 112. As indefiniteness issues are not considered in IPR, the question then becomes: Should the broadest of the possible competing construction for the claim term be proposed in order to get an IPR instituted on the claim? Or, should the petitioner avoid proposing a construction for an indefinite term to reserve rights for a later, district court challenge?  Of course, holding back claims for a later district court proceeding is typically disfavored given the entire point of IPR, in most cases, is to avoid the expense of district court litigation.  For that reason, most petitioners forge ahead to attack the indefinite claim.

As explained by the Federal Circuit this week in Sonix Technology Co., Ltd. V. Pubs. Int'l Ltd. et al., (here), Petitioners would be wise to note the 112 issue in their petitions.

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By Scott A. McKeown
| January 4, 2017
CAFC Grants En Banc Review of IPR Appeal Bar

Bar to Appealing 315(b) Disputes Likely to be Overruled


Back in November, the Federal Circuit issued a non-precedential decision in the Click-To-Call Techs. v. Oracle Corp., which openly questioned the continued viability of Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d 652 (Fed. Cir. 2015) post-Cuozzo.  As a reminder, Achates held that issues arising under 35 U.S.C. § 315(b) (i.e,, IPR one year, time bar) could not be appealed to the CAFC, pursuant to 314(d).  

Today, in Wi-Fi One LLC v. Broadcom (here), the Court granted en banc review of the IPR appeal bar.

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By Scott A. McKeown
| January 3, 2017
PTAB Trials to Increase in Cost for 2017

Fee Setting Authority to be Exercised in 2017 

The USPTO discussed its first ever fee increase under the fee setting authority of the America Invents Act (AIA) in November of 2015.  At the time, an initial proposal was provided to the Public Patent Advisory Committee (PPAC) for review.  While the hope was to have the proposed fee adjustments take effect on October 1, 2016 (start of FY 2017), significant stakeholder feedback and considerations have, understandably, slowed the rule making process.

Prior to the close of 2016, a Notice of Proposed Rule Making (NPRM) issued requesting comments from the public on proposed fee increases for post-grant patent proceedings, including AIA trials.  With comments collected last month, a Final Rule Notice is imminent.  

Expected Patent Trial & Appeal Board (PTAB) fee increases include:

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By Scott A. McKeown
| December 14, 2016
CAFC Explains PTAB Expertise & Its Role In IPR Fact Finding

Expert Agency Need Not Accept Expert Testimony


AIA trial practices of the Patent Trial & Appeal Board (PTAB) are often analogized to that of the district courts. Yet, in practice, there are more differences than similarities between the two. The PTAB, unlike the district courts, is an expert agency. For this reason, its decisions are reviewed on the substantial evidence standard of the Administrative Procedure Act (APA). 5 U.S.C. § 706. Further the PTAB applies the preponderance of the evidence evidentiary standard, which stands in stark contrast to the clear and convincing standard of the district court.  Taken together, these two foundational differences are worlds apart from district court trial practices, and, serve as the primary drivers behind the appeal of the PTAB to patent challengers.

Counsel more accustomed to the favorable patentee standards of the district courts, often times find themselves struggling with the seemingly bizarro world of PTAB administrative trials— such as the agency's ability to disregard expert testimony that would be given weight in the district courts.
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By Scott A. McKeown
| December 12, 2016
CAFC Faults IPR Record on APA Grounds

CAFC Decision Faults 103 Analysis on Reviewability Grounds


Last week, in In re Nuvasive, the Federal Circuit vacated the PTAB’s Final Written Decision from IPR2013-0056 involving Medtronic, Inc and NuVasive, Inc. (“NuVasive”) and remanded the case “for additional findings and explanations regarding the PHOSITA’s motivation to combine the prior art references.”  (2015-1670, at 13 (Dec. 7, 2016)).

But this case isn't so much about about the law of obviousness but the adequacy of the appellate record under the Administrative Procedure Act (APA).

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