Post-Grant Review

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Issue Joinder within Statute, Matter of Agency Discretion 

At the outset of this year, I explained how Target Corp. v. Destination Maternity Corp (IPR2014-00508) was one of five Patent Trial & Appeal Board (PTAB) decisions that changed post-grant trial practice in 2014. Target was notable because it was a significant departure from previous PTAB practice. That is, up until Target, a same petitioner was able to join a first-filed petition with a later filed, second petition (i.e., “issue joinder). The Target decision found issue joinder outside of the statutory authority granted by 35 U.S.C. § 315(c). cf. Microsoft Corp. v. Proxyconn, Inc., (IPR2013-00109, Feb. 25, 2013)

In Target, as in Microsoft, the petitioner filed a second petition outside of their 12-month window to attack a claim that was excluded from the Trial Order of an earlier, timely filed petition (argued as being necessitated by the patentee’s failure to provide requested materials in litigation discovery). Since joinder is a codified exception to the 12-month window, absent issue joinder, the claim could not be attacked with a second “stand-alone” petition. The Target majority denied issue joinder back on the basis that § 315(c) is directed solely to joinder of parties. 

A Request for Rehearing was filed in November of 2014 challenging the Target Decision. Today, the PTAB issued a second expanded panel decision reversing the 2014 decision.
Continue Reading PTAB Expanded Panel Reverses Field on Issue Joinder

CAFC Decides First IPR Trial Appeal

Today, in In Re Cuozzo Speed Technologies, LLC, the Court of Appeals for the Federal Circuit (CAFC) decided that the broadest reasonable interpretation (BRI) construct was appropriate for interpreting patent claims in AIA trial proceedings. (here)

As previously discussed, oral argument in Cuozzo was held back on November 3, 2014. The notable issues in dispute included: (1) whether the Patent Trial & Appeal Board (PTAB) was free to depart from the district court style claim construction standard enunciated in Phillips v. AWH (CAFC 2005) in favor of BRI as applied by the USPTO in all agency proceedings; and (2) whether trial institution decisions become appeallable once a final written decision is issued. (Note: Interlocutory appeal of such decisions had already been foreclosed by the CAFC).

In a 2-1 decision, the majority held that Congress passed legislation fully aware of BRI practices at the PTAB, especially as it related to patent reexamination. And, in any event, the USPTO was given rule making authority by statute for implementing specifics of AIA trial proceedings. Further, the majority found the ability to amend, long the justification for applying BRI, is available during AIA trials.

On the question of institution decision review, the Court found that a complete bar to appeal was intended by the language of  35 U.S.C. § 314(d), which states institution decision are final and non-appealable.

Judge Newman authored the dissent as to both issues.

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Continue Reading CAFC Endorses Use of BRI in AIA Trial Proceedings

PTAB Bi-monthly Webinar Series Starts Today

As a reminder, the PTAB’s “Boardside Chat” Webinar series kicks off today with an overview of PTAB statistics and key decisions.

The Instructions for today’s webinar are provided below.

Webcast Instructions for Tuesday, February 3:

Event address for attendees: https://uspto-events2.webex.com/uspto-events2/onstage/g.php?MTID=e26061533ffc851f338af0ad718660c3f
Event number: 313 818 218
Event password: 123456
Dial In: 1-571-270-7000

PTAB Claim Constructions Often Limited to Intrinsic Record

Yesterday, in Teva Pharmaceuticals USA, Inc., et al v. Sandoz, Inc. et al., (here) the U.S. Supreme Court reversed decades of CAFC precedent permitting de novo review of district court patent claim constructions. More specifically, the high court explained that when reviewing a district court’s resolution of subsidiary factual matters made in the course of its construction of a patent claim, the CAFC must apply a “clear error,” not a de novo, standard of review. This decision will also impact the CAFC’s previous practice of applying de novo review of Patent Trial & Appeal Board (PTAB) claim construction decisions….or will it?
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Continue Reading Teva v. Sandoz & The PTAB

Spooking Financial Markets Via IPR

Over a year ago, I explained how “PTAB Trolls” were attempting to manipulate the new administrative trial system of the Patent Trial & Appeal Board (PTAB). PTAB Trolls attempt to extract settlements from patentees involved in high value litigation disputes. A PTAB troll operates as follows: (1) Identify a patentee that has been awarded a large damage verdict (not yet satisfied); (2) collect the prior art used in the litigation; (3) apply the same art in an Inter Partes Review (IPR) (with lower burdens of proof); (4) hope to leverage those burdens, and speed of the PTAB into forcing a settlement from the patentee. 

Other versions of this practice include PTAB Trolls that will take a “short” position in a penny stock having a market value closely tied to a patent litigation verdict. In such cases the mere filing of an IPR can spook investors, impacting trading volumes enough to cause a temporary, but significant, price drop (i.e., quick profit for a short seller). To date, these efforts have mostly failed, but not all. (See Patience Haggin’s informative article on PTAB Trolls here)

Next up, well financed hedge funds taking on key drug patents of the pharmaceutical industry?

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Continue Reading The PTAB as a Hedge Fund Tool?

PTAB Designates Decision as Informative on 315(b) Question 

Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR on any patent once 12 months have elapsed after service of a complaint alleging infringement of that patent. The rationale for the statutory bar of 315(b) is straightforward. That is, IPR was designed to be a true alternative to patent litigation, not an adjunct process that was typical of the inter partes patent reexamination proceeding it replaced. By mandating that an IPR filing be brought earlier in the litigation timeline, Congress hoped to avoid duplicative proceedings, avoid patentee harassment, and enhance the ability of the Patent Trial & Appeal Board (PTAB) to provide a timely resolution to such business disputes.

Last summer, the PTAB considered 315(b) in relation to an amended complaint. That is, in cases where a party is added by amended complaint, when does the service become effective for purposes of 315(b), when the added party receives a copy of the proposed complaint, or when the proposed complaint is entered by the court? (via motion for leave to file) This question was answered in TRW Automotive US LLC v. Magna Electronics, Inc., IPR2014-00293 (Paper 18) (June 27, 2014) (here)…
Continue Reading Proposed Amended Complaint Not Served Under IPR Statute 315(b)

Amended Claims Survive IPR, Does Estoppel Follow?

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump-free. As discussed previously, there has been some controversy in the early going as patentees struggle to adapt to the motion requirements necessary for amending claims before the PTAB. That is, many patentees perceive the rigid motion requirements as an unfair hurdle, justifying their criticism on the fact that the PTAB has yet to permit a contested amendment….until last week, when the Board granted two.
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Continue Reading PTAB Accepts First Contested Claim Amendment, Now What?

Changes to PTAB Rules Expected Shortly

Back in June of 2014 the USPTO issued a Request for Information in the Federal Register entitled, Request for Comments on Trial Proceedings Under the America Invents Act Before the Patent Trial & Appeal Board. The notice posed 17 questions to the public. Since that time, the Office has considered the public feedback and has been working on two sets of changes to PTAB current trial practices.
Continue Reading PTAB Rule Changes for 2015

Top 5 Practice Changing PTAB Decisions of 2014

Since the start of the administrative patent trials of the America Invents Act (AIA) on September 16, 2012, much has changed at the Patent Trial & Appeal Board (PTAB). The number of AIA trial petitions has exploded. This increased workload has diminished the Board’s appetite for hand-holding, telephone conferences, and has arguably driven changes to once accepted procedural practices. Some might also argue that the ability to get a trial initiated has also become more difficult.

The coming months will bring further changes in the way of notice-and-comment rule making as well as a liberalization of current discovery and filing requirements. Before moving to that topic next week, let’s review the five most noteworthy decisions of 2014 for PTAB practitioners.
Continue Reading 2014 PTAB Decisions That Changed Post-Grant Trial Practice

Petition Must Establish Grounds of Unpatentability

The reason for presenting a declaration in support of an AIA trial petition is simple — evidence is superior to attorney argument. Likewise, the Patentee will invariably respond with their own declaration once trial is ordered. Indeed, not filing a declaration together with the petition will likely foreclose rebuttal opportunity. Furthermore, as the patentee may not introduce new testimonial evidence at the time of the preliminary response, the petition declaration (if properly developed) should insulate the petition from being denied by the PTAB. For these reasons, most every IPR, PGR or CBM petition filed to date has been accompanied by a supporting declaration of one of skill in the art.

Declarations do not have page limits. On the other hand, the page limit on petitions is tight (60 pgs. IPR; 80 pgs. PGR/CBM). As a result, some have begun relying a bit too much on declarations in an attempt to side-step the petition limits. Last week, the PTAB designated an order from last summer “informational” to inform the public that such “incorporation by reference” strategies will result in petition denial.   …
Continue Reading PTAB Cautions on Petition Shortcuts