Post-Grant Review
By Scott A. McKeown
| August 8, 2017
Separate Article III Standing Not Necessary for PTAB Appellees

Article III Standing Only Necessary for Party Invoking Authority of Federal Courts


Last week, I analyzed the government's arguments supporting Article III standing for intervenors in Knowles Electronics v. Matal. In that case, the panel questioned whether the government had Article III standing to intervene in a case where the original appellee dropped out. As to the arguments presented by the government, I explained that I found the most compelling argument to be that the agency can piggyback off of the Article III standing of the appellant as the standing inquiry is properly directed at those who invoke the court's jurisdiction. 

Yesterday, two of the three judges (Newman, Clevenger) on the Knowles panel agreed with the above "piggyback" argument in Personal Audio, LLC v. Electronic Frontier Foundation.

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By Scott A. McKeown
| August 2, 2017
PTAB Designates New Precedent for AIA Trials

Assignor Estoppel Not an Exception to 311(a)


The Patent Trial & Appeal Board (PTAB) has designated the following decision as precedential: Athena Automation Ltd v. Husky Injection Molding System Ltd., IPR2013-00290, Paper 18 (PTAB Oct. 25, 2013), Section II.A. (here)

Athena holds that the doctrine of assignor estoppel is not an exception to 35 U.S.C. § 311(a), which allows “a person who is not the owner of a patent” to file a petition for inter partes review. This decision was later left undisturbed by a split-panel of the Federal Circuit.  The majority found review of assignor estoppel precluded by operation of the appeal bar (35 U.S.C. § 314(d), relying upon the Court's earlier decision in Achates Reference Publishing.  Of course, the continued viability of Achates is being reconsidered, en banc, in in Wi-Fi One LLC v. Broadcom (here).  As such, this agency precedent might be revisited by the CAFC down the line.
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By Scott A. McKeown
| July 18, 2017
CAFC Finds Forfeit of Half-Win Before PTAB

Failure to Argue Differing Claim Language of Similar Claims Haunts Appellant


PTAB practitioners must always be mindful of the Board's longstanding practice to treat grouped claims as standing or falling together. That is, claims should be argued separately where the claims are phrased similarly, but with some deliberate grammatical or additional term difference to distinguish scope.  In those cases, it is important to discuss the implications of the grammatical differences. Simply reciting a claim limitation, and asserting that the limitation is/is not found in the prior art, is not taken by the Board as a separate argument for patentability.

That said, such layered arguments may fall prey to the tight space constraints in AIA trial proceedings where more pressing arguments are necessary.  

For example, one of the more particularly tricky aspects of AIA trial practice prior to May of 2016— at least for petitioners— was fitting all of petitioners arguments within the fifteen pages allocated for a Petitioner Reply by the PTAB.  As a result of the limited real estate, some petitioner arguments that might have been otherwise made were often cut for space constraints. Fortunately, in May of 2016, the fifteen page limit was increased to twenty-five pages.

Yesterday's decision of the Federal Circuit emphasized the risks of claim grouping; perhaps a reflection of the earlier AIA trial briefing constraints.

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By Scott A. McKeown
| July 12, 2017
Patent Owners Starting to Get the Last Word at the PTAB

Patent Owner Sur-Replies on the Uptick


Back in June of 2016, the Federal Circuit issued its opinion in Genzyme Therapeutic Products LP v. BioMarin Pharmaceutical Inc.(here).  At the time I explained that Genzyme was a game-changer.  This was because it made clear that the trial portion of an AIA proceeding was an opportunity for both sides to build a record — not a mere analysis of the four corners of the trial petition.  As stated simply by the Court in Genzyme, "[t]he purpose of the trial in an inter partes review proceeding is to give the parties an opportunity to build a record by introducing evidence—not simply to weigh evidence of which the Board is already aware." (emphasis added)  

As a reminder, an instituted AIA trial (absent a motion to amend) includes a single brief from each party, the petitioner filing the last brief as the party bearing the burden of demonstrating unpatentability.  

Since Genzyme, the Board has become far more comfortable with petitioners citing to new exhibits in petitioner replies (assuming such exhibits/arguments are in support of existing positions as opposed to altogether new theories).  At roughly the same time Genzyme issued, and since, the Board has been faulted for violating the Administrative Procedure Act (APA). For example, for failing to give parties a fair opportunity to respond to issues. (e.g., SAS Institute Inc., v. ComplementSoft LLC)  These developments are helping drive a more liberal perspective at the Board as to additional briefing possibilities for Patent Owners.  

A review of trial practices immediately before Genzyme, as compared to today, illustrates an increased willingness on the part of the PTAB to permit Patent Owner sur-replies at the close of the trial, effectively giving Patent Owners the last word in trial briefing.
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By Scott A. McKeown
| June 21, 2017
Another WiFi One Hint from the CAFC

"Closely Tied" Language of Cuozzo & Institution-Centric Statutes


The en banc opinion on the scope of the AIA's appeal bar (35 U.S.C. §§ 324(e)/314(d)) remains outstanding in WiFi One.  Still, we have seen a few opinions from the Federal Circuit as of late that nibble around the edges of this issue.  From these decisions, we see the Court focusing on the statute underlying the appealed issue, and whether or not that statute is tied, in timing or substance, to the institution stage.  The most recent, Credit Acceptance Corp. v. Westlake Services, found another exception to the appeal bar for CBM estoppel. 35 U.S.C. 325(e)(1).
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By Scott A. McKeown
| June 13, 2017
AIA Trials Unconstitutional? Don

High Court to Review Constitutionality of AIA Trials


The Supreme Court has had at least three occasions over the past 7 months to review the constitutionality of AIA trial proceedings — it declined all three invitations. Thus, the writing appeared to be on the wall when the same question was posed recently in Oil States Energy Services v. Greene’s Energy Group.  But, then the Federal Circuit wavered somewhat as to its conviction in its own precedent on point.  When asked to reconsider the debate as to whether a patent is purely a private right or public right (as previously decided in MCM Portfolio LLC v. Hewlett-Packard Co. et al.) the CAFC's en banc denial of that request a few weeks ago (here) was a split decision.  (As a reminder, as a public right, a patent may be adjudicated by an Article I court).

Never one to shy away from a new opportunity to set the CAFC straight, the High Court suddenly became interested in the very same debate it only very recently passed over three times, granting certiorari yesterday. (Order here, briefs here)
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By Scott A. McKeown
| June 12, 2017
Preliminary Response Evidence Should Focus on Technology

Preliminary Responses Accompanied by Declaration Evidence: Updated Results 


Back on May 1st of 2016, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses.  The PTAB implemented this change to address complaints of patentees who claimed they were disadvantaged by previous rules precluding such new evidence from accompanying a preliminary response. It was argued that the previous rules were especially imbalanced as almost all petitions were accompanied by petitioner declaration evidence, and that absent evidence in kind from patentees, institution was unavoidable.  I had my doubts as to whether this new mechanism would be the boon that patentees had hoped.

Now a year removed, some updated results.
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By Scott A. McKeown
| June 7, 2017
En Banc Denial of CBM Issue Raises Appeal Bar Debate

Focus of CBM Standing Analysis: Claim Language


Yesterday, the Federal Circuit denied en banc review in Secure Axcess LLC v. PNC Bank National Assoc., et al.  The rehearing request sought a full court review of America Invents Act (AIA) Sec. 18's definition of a "business method patent." This same issue was denied en banc review in April of this year in Google v. Unwired PlanetAs in that decision, the dissents from denial raised the appeal bar debate now awaiting decision in WiFi One.
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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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