Decisions of Note for Practitioners

During last week’s, blog webinar I recounted some of the more noteworthy Patent Trial & Appeal Board (PTAB) decisions of 2015. My focus was not on interesting cases in an academic sense, but instead, on cases that were impacting PTAB practice today.

These cases included clarification of various AIA estoppel provisions, the final word on issue joinder, clarification of the Idle Free amendment requirements, and a decision that was a game changer for AIA petition practice.
Below is a discussion of each case, in order of importance; I start first with Conopco. Although originally decided in late 2014, it was the March 2015 rehearing decision that finally held 35 U.S.C. § 325(d) as including a “reasonably could have been raised” component.

1.     Conopco, Inc. dba Unilever v. The Procter & Gamble Company IPR2014-00628, Pet.  Req. for Reh’g Denied, Paper 23, March 20, 2015 (here)
In Conopco the Board declined institution under 325(d).  Of note, the decision found the art of  a follow-on petition to be similar/substantially similar to a first, failed petition, not on technical similarity, but on the basis that it “reasonably could have been raised” earlier.  

[Patentee] argues that the Board should not have considered whether any new prior art or arguments raised in the second petition were known or available to [patentee] at the time of filing the first petition.     .       .      . [patentee’s argument] would allow petitioners to unveil strategically their best prior art and arguments in serial petitions, using our decisions on institution as a roadmap, until a ground is advanced that results in review—a practice that would tax Board resources, and force patent owners to defend multiple attacks. 

While each trial petition is analyzed as to particular facts, Conopco was cited quite frequently in 2015. (Note: the 315(b) bar prevents follow-on petitions in many cases, but not all)

2.     Apotex v Wyeth IPR2015-00873, Institution Decision, Paper No. 8, September 16, 2015 (here)
In Apotex, the Board considered whether a trial ground denied in a first petition as “redundant” was subject to 315(e)(1) estoppel in a second petition raised by a same petitioner (i.e., reasonably could have been raised).  The Board held that a redundant ground could not have been raised, and therefore was not barred by 315(e)(1), explaining:

[G]rounds raised during the preliminary proceeding, but not made part of the instituted trial, are not raised “during” an inter partes review and cannot be the basis for estoppel under 35 U.S.C. § 315(e)(1). Nor are such grounds ones that “reasonably could have been raised during” the review, because once denied, the Board’s decision on institution prevents Petitioner from raising that ground during the trial.

In this case, trial was denied on the merits.  Also, 325(d) was not used to deny institution, presumably in the interests of fairness given the earlier redundancy determination. The topic of redundancy is an issue to watch in 2016 as some Federal Circuit panels have recently voiced significant concern with its due process implications. This issue may be ripe for mandamus in 2016 given the indirect encouragement of the Court.

3.     Zhongshan Broad Ocean Motor Co., et al., v. Nidec Motor Corp., IPR2015-00762, Pet. Req. for  Reh’g Granted,  Paper 16, October 5, 2015 (here)
Zhonghsan (see earlier post here) appears to have put to rest the debate over whether or not issue joinder is permitted under 35 U.S.C. § 315(c).  This case, made clear that while issue joinder may be denied on discretionary grounds where appropriate, such a denial should not be based on the argument that 315(c) only permits party joinder. 

Since Target v. Destination Maternity, petitioners have learned to be over inclusive on targeted claims due to the uncertainty on issue joinder. As such, issue joinder may become less of a concern going forward. 

4.     Square Inc. v.  Unwired Planet, LLC, CBM2015-00148, Denial of Institution, Paper 14, December 23, 2015 (here)
In Square, the Board considered the applicability of “reasonably could have raised” estoppel under 325(e)(1)  in a follow-on CBM filing.  Keep in mind that CBM estoppel outside of the USPTO is only effective as to art actually “raised” in the CBM proceeding by a petitioner.  The estoppel standard applied to a same petitioner’s second CBM filings is asymmetrical, encompassing “reasonably could have been raised.”  

Square was one of the first decisions to explore what “reasonably could have raised” might mean in the context of newly discovered art.  In this decision, the Board held it was not enough to simply be unaware of prior art at the time of the first filing. Rather, the Board required an explanation as to why the discovered art could not have been raised earlier. In this case the Board seemed particularly focused on the timing of the second filing. 

This will remain a hot topic for 2016 as both the courts and the USPTO consider these fact intensive scenarios.

5.     MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Order re Motion to Amend, Paper 42, July 15, 2015 (here)
MasterImage clarified the Idle Free amendment requirements. More specifically, the Board explained the Idle Free language: “prior art of record and also prior art known to the patent owner” by distinguishing between record art, and that which would necessarily be produced under the Duty of Candor. 37 C.F.R. § 42.11.

With respect to “prior art of record…” the Board explained this information as follows:

The reference to “prior art of record” in the above-quoted text, as well as everywhere else in Idle Free, should be understood as referring to:

          a. any material art in the prosecution history of the patent;

          b. any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review; 

          c. any material art of record in any other proceeding before the Office involving the patent.

As to the more open ended language “prior art known to the Patent Owner,” the Board clarified this language as:

The reference to “prior art known to the patent owner” in the above quoted text, as well as everywhere else in Idle Free, should be understood as no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.     .    .     . [W]hen considering its duty of candor and good faith under 37 C.F.R. § 42.11 in connection with a proposed amendment, Patent Owner should place initial emphasis on each added limitation. Information about the added limitation can still be material even if it does not include all of the rest of the claim limitations.

Amendment will remain unpopular at the PTAB for 2016 for a variety of reasons, not the least of which is intervening rights.  That said, this change, together with other quick fix changes, enables an interested patentee to readily amend, if desired.