Additional Informative Decisions 325(d)

Today the Patent Trial & Appeal Board (PTAB) added to its growing stockpile of cases that address the meaning of “same or substantially the same prior art or arguments” under 35 U.S.C. § 325(d). This growing body of decisions is welcome news for Patent Owners as it emphasizes the scrutiny given to AIA trial petitions that attempt to revisit prior art and arguments of a previous proceeding.

The PTAB has designated the following decisions informative.

Kayak Software Corp. v. International Business Machines Corp., Case CBM2016-00075 (PTAB Dec. 15, 2016) (Paper 16). In this decision, the Board exercised its discretion under 35 U.S.C. § 325(d) and declined to institute review of the claims under obviousness grounds because the record indicated that the cited prior art was previously presented to and extensively considered by the Office during prosecution. The Board further was not persuaded that the incremental addition of an already considered reference was sufficient to avoid § 325(d), but explained that the presence of certain factors, including a limited prosecution history, clear errors in the prosecution, and/or the cursory consideration of the prior art may weigh against the exercise of discretion to deny institution under § 325(d).

Becton, Dickinson & Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8). In this decision, the Board weighed a non-exclusive list of factors and concluded to exercise its discretion under 35 U.S.C. § 325(d) and declined to institute review of the claims under certain obviousness grounds. The non-exclusive factors the Board considered were: (1) the similarities and material differences between the asserted art and the prior art involved during examination; (2) the cumulative nature of the asserted art and the prior art evaluated during examination; (3) the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis of rejection; (4) the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art; (5) whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and (6) the extent to which additional evidence and facts presented in the Petition warranted reconsidered of the prior art or arguments.

Previous 325(d) decisions designated as informative:

Unified Patents, Inc. v. Berman, Case IPR2016-01571, Case IPR2016-01571 (PTAB Dec. 14, 2016) (Paper 10)
Hospira, Inc. v. Genentech, Inc., Case IPR2017-00739 (PTAB July 27, 2017) (Paper 16)
Hospira, Inc. v. Genentech, Inc., Case IPR2017-00777 (PTAB Aug. 22, 2017) (Paper 7)

Copycat House Bill to Generate Positive Buzz?

Today, Representative Steve Stivers (R-OH) and Representative Bill Foster (D-IL) introduced H.R. 5340, the so-called “Support Technology & Research for Our Nation’s Growth and Economic Resilience (STRONGER) Patent Act.” The bill (here) is a carbon copy of the Senate Bill (save some cosmetic changes). On the Senate side, the Bill has existed in some form since 2015 but has languished. This is because its proposals would essentially legislate away the patentability trial mechanisms of America Invents Act (AIA). With the mammoth Tech and Bio/Pharma lobbies on opposing sides of that issue, a bill viewed as lopsided by Tech is a non-starter.

If nothing else, the House Bill appears to be an attempt to create some positive, political buzz.

Given the distance between powerful lobbies on these issues, I would not expect meaningful movement on the legislative front any time soon. Some of the more patent friendly changes over the past year have come from the PTAB itself. My expectation is that the agency will continue this trend and address some of these issues via notice-and-comment rulemaking later this year.

PTAB Remand Not Always Deja Vu

When appealing a decision of an administrative agency such as the Patent Trial & Appeal Board (PTAB), reversal is quite rare. This is because rarely will a pure question of law (with no facts in dispute) control the outcome of such an appeal  Rather, a typical PTAB appeal to the Federal Circuit will dispute whether the agency record fully supports its decision, or is complete with respect to required fact finding. In these cases vacatur and remand are appropriate.

Since 2016, as the volume of appeals from the PTAB has increased, so to has the number of remands to the agency. Where a PTAB record is incomplete, one might expect the agency to simply remedy the shortcoming on remand to maintain its earlier decision. However, two years of recent statistics reflect a more balanced outcome. Continue Reading PTAB Remands from the CAFC: Mixed Outcomes

March Webinar to Explore the Evolution of PTAB Trial Practices

This month’s edition of the free webinar series will be held on Wednesday, March 28th @ 2PM (EST). The March Webinar is entitled: Evolution of PTAB Trial Practices.

Register (here)

Program Description: The Patent Trial & Appeal Board (PTAB) has evolved significantly since first opening its doors in 2012 to accept AIA Trial petitions. Since that time trial institution rates have continuously tracked downward from 85+% to today’s 50-60% range. Likewise, it is now  more common for the PTAB to reverse course at the time of Final Written Decision (FWD). Trial strategies have also changed in response to the recent liberalization of the “appeal bar,” shifting of amendment burdens, and crackdown on multiple petition strategies. Looking forward into 2018, even more significant changes are on the horizon.

New strategies and tactics must be developed to keep pace with the constant recalibration of the nation’s busiest patent court.  Please join Ropes & Gray’s PTAB Chair Scott McKeown and litigation partner Jim Davis for the upcoming webinar discussing PTAB changes & emerging trends impacting 2018 patent disputes.

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. Two hours prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

Continuation Applications & Terminal Disclaimers: Infectious Estoppel

Patent owner estoppel is codified by Patent Trial & Appeal Board (PTAB) regulation (37 C.F.R. § 42.73(d)(3)(i)). This rule is designed — much like patent interference estoppel — to thwart patent owners from securing claims in a later USPTO proceeding that are patentably indistinct to claims lost in a PTAB trial. This regulation has largely flown under the radar relative to the more well-known statutory estoppel provisions that applies to failed PTAB petitioners. Yet, as I pointed out previously, patent owners, and more particularly patent prosecutors, would be wise to take heed of this new threat.

Yet, understanding this new prosecution threat is only part of the battle. The best practice going forward is to structure portfolios to minimize potential PTAB estoppel damage. Continue Reading Standard Patent Prosecution Practices Invite Collateral PTAB Damage

PTAB Explains Orange Book Trial Experiences

In today’s Boardside Chat, the Patent Trial & Appeal Board (PTAB) explained expanded panel practice, and provided some useful insight into its work on Orange Book patents.

The statistics (here) highlight:

•83% of all petitions challenging Orange Book-listed patents result in the patent being unchanged by PTAB
•The cumulative institution rate for Orange Book petitions (66%) is essentially the same as the cumulative overall institution rate (68%)
•Just over half of all final written decisions for petitions challenging Orange Book-listed patents find all claims patentable
•80% of all challenged Orange Book-listed patents have 1 or 2 petitions, compared to 87% of all challenged patents
•85% of all challenged Orange Book-listed patents have 1 or 2 petitioners, compared to 94% of all challenged patents

Petitions Challenging Orange Book-listed Patents

(as of End FY17: 9/16/12 to 9/30/17)

Boardside Chat Tomorrow

The USPTO’s Patent Trial & Appeal Board (PTAB) is hosting a “Chat with the Chief” webinar tomorrow, Tuesday, March 13, from noon to 1 p.m. ET. Chief Judge David Ruschke will discuss “New PTAB Studies in AIA Proceedings: Expanded Panels and Trial Outcomes for Orange Book Listed Patents.”

My previous fact check on Expanded Panels is found (here)

Webinar Access Information for Mar. 13, 2018 at noon, E.T.: 

Click on the link: 

Event/Access #: 994 629 244

Event password: ChiefChat2018

Access code: 994 629 244

Preserving Access to Cost Effective Drugs (PACED) Act

Senator Tom Cotton (R-Arkansas) and Senator Claire McCaskill (D-Missouri) along with Senators Pat Toomey (R-Pennsylvania), Joni Ernst (R-Iowa), David Perdue (R-Georgia) introduced the Preserving Access to Cost Effective Drugs (PACED) Act (S.2514), to “restore the power of the Patent and Trademark Office and federal courts, and the International Trade Commission to review patents regardless of sovereign immunity claims made as part of sham transactions.”

Introduced this past Wednesday, S.2514 is backed by a host of health care entities, including America’s Health Insurance Plans (AHIP), Association for Accessible Medicines, Patients for Affordable Drugs Now, BlueCross BlueShield Association, and Blue Shield of California.

The bill would prevent any patent owner from advancing a sovereign immunity defense, including the sovereign immunity accorded to Indian tribes in any USPTO derivation proceeding, reexamination, Inter Partes Review (IPR) or Post Grant Review (PGR) proceeding.

The background accompanying the bill explains:

  • By avoiding review, pharmaceutical firms can prevent generics from coming to market and raise the cost of drugs.
  • Similarly, if non-practicing entities, often referred to as “patent trolls,” can skirt a review or use a tribe as a straw plaintiff, it becomes harder for businesses to defend themselves against dubious patent claims.
  • This legislation would do nothing to prevent pharmaceutical firms from partnering with Indian tribes for research, development, and licensing of drugs.

Given the bipartisan support, and interest of states in controlling health care costs, this bill may make quick progress. So much for that bit of excitement.

Legislative Intrusion on Article III Courts Considered in Patchek

The Supreme Court provided its most up-to-date guidance on the boundaries of Article III jurisdiction relative to acts of Congress in Patchak v. Zinke, No. 16-498. This decision, issued on February 27th, previews the varying perspectives that will drive the ultimate conclusion in Oil States.

Stating the holding of the Patchak plurality (6-3) most succinctly, and perhaps foreshadowing Oil States, Justice Ginsburg explained: “What Congress grants, it may retract.”

Continue Reading Oil States Result Previewed by SCOTUS?

PTAB Bar Association & More

This month brings a host of Patent Trial & Appeal Board (PTAB) related CLE offerings.

First up is Managing Intellectual Property’s (MIP) U.S. Patent Forum on March 13th in New York City. This full-day forum will take an in-depth look at the USPTO & International Trade Commission (ITC) decisions of 2017 impacting patent monetization. The program also includes a segment: “Is the America Invents Act Weakening Licensing?” that will examine both tech and Bio/Pharma perspectives.

Next, up is the 8th Annual Patent & Administrative Law Conference on March 15th at American University in Washington D.C.  Co-hosted by Unified Patents, this program, in addition to discussing legal developments in IP, focuses on the unique administrative law issues raised in trial practice before the PTAB. The program includes “The PTAB & the Public Interest,” previewing expected changes and legislation in 2018.

Finally, on March 22-23rd is the sold out 2018 PTAB Bar Association Annual Conference at the Ritz-Carlton in Washington, D.C.  Pre-conference sessions will be offered March 21st. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of the Patent Trial Appeal Board (PTAB) best practices, recent developments and trends.  This year, in addition to the PTAB Boot Camp, a Master Class will be offered for more seasoned practitioners. Finally, a special “Fireside Chat” with Director Iancu will take place on March 22, 2018 at 5 PM.