Pending Cases to Revisit Pruned Claims/Grounds

Today the Patent Trial & Appeal Board (PTAB) issued guidance on the impact of SAS on AIA trial proceedings. The guidance explains that:

[F]or pending trials in which a panel has
instituted trial only on some of the challenges raised in the petition (as opposed to all challenges raised in the petition), the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition. … ¶ [F]or pending trials . . . the panel may take further action to manage the trial proceeding, including, for example, permitting additional time, briefing, discovery, and/or oral argument, depending on various circumstances and the stage of the proceeding.

You can find the full guidance (here)

Special PatentsPostGrant.Com Webinar Next Tuesday

In addition to the already scheduled webinar next Wednesday on Bio/Pharma Deals & Dispute Resolution in the PTAB Era, a special webinar entitled: Supreme Court Debrief: Oil States & SAS Institute:The Aftermath will be held on Tuesday, May 1, 2018 @ 1-2PM (EST) Register (here)

Yesterday, the Supreme Court issued opinions in both the Oil States and SAS Institute appeals. These opinions will have an immediate impact on proceedings at the Patent Trial and Appeal Board (PTAB), pending PTAB appeals to the Federal Circuit, and patent litigation strategies. The webinar will identify key takeaways from these opinions, and offer insights and discuss possible practice changes that will occur in the weeks/months ahead. Ropes & Gray speakers will be PTAB practice chair Scott McKeown, Appellate and Supreme Court practice chair Douglas Hallward-Driemeier, and patent litigator Matthew Rizzolo.

Patent Owners Will Not Like the Post-SAS PTAB

Last month, I predicted a 7-2 affirmance of Oil States (although I had Kennedy in the dissent with Gorsuch rather than Roberts). Still, the outcome of this closely watched case was hardly a surprise, nor was the content of the dissent. (here) While some will read the “narrow” holding characterization of the Oil States majority as a beacon of hope for further constitutional challenges, I don’t see that at all. Rather, I see the Court making clear that it is not indirectly endorsing any PTAB practices highlighted in the briefing, oral argument, and in the dissent — panel stacking perhaps being the most noteworthy. Going forward, I don’t see much Oil States impact at the PTAB.

SAS Institute on the other hand, will bring about some of the most significant PTAB practice changes to date. Continue Reading How the SAS Institute Ruling Will Impact PTAB Practice

Expanded Does Not Equal “Stacking”

As I explained previously, an expanded panel at the PTAB is an exceedingly rare occurrence.  But, as the Federal Circuit made clear in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co.(here), on at least one occasion, PTAB panel expansion was utilized to drive uniformity on an inconsistently decided question of law (issue joinder). That is, an expanded panel was utilized to change the underlying decision in an issue joinder dispute.  PTAB critics were quick to latch onto this “panel stacking” as evidence of an anti-patent bias. This criticism was even echoed by the Supreme Court during the Oil States argument.

Since that time, the Board has continued to utilize expanded panels on issues of importance without changing the underlying result.  However, the recent panel stacking notoriety continues to haunt all expanded panel decisions.

Dispelling this perception, the Chief Judge clarified the purpose and framework of expanded panels during yesterday’s quarterly meeting of the Patent Public Advisory Committee (PPAC). Continue Reading PTAB Explains Expanded Panel Rationales

WiFi One Touchstone: Closely Related to Patentability Determination?

As I predicted would happen last Spring, the Court held today in Wi-Fi One v. Broadcom (here) that the appeal bar is limited to Director determinations closely related to the preliminary patentability determination, or the exercise of discretion not to institute. As such, questions that may be fully and finally decided before a trial on the merits, such as 315(b), are no longer barred from appeal. Continue Reading CAFC Softens PTAB Appeal Bar

Best Practices for Presenting Prior Art

Join the PTAB for the final Boardside Chat webinar of 2017 today, Dec. 7 from noon-1 p.m. ET. The chat will discuss “Best Practices for Presenting Prior Art References and Proving a Document is a Printed Publication.”

PTAB Judges Lora Green and Brian McNamara will present and address audience questions. This topic is relevant to both ex parte appeal and AIA trial proceedings. The webinar is free and open to everyone. (view here)

No Duty to Discuss Closest Prior Art…But you Probably Should Anyway

In implementing the Federal Circuit’s In Re Aqua Products’ holding, the Patent Trial & Appeal Board (PTAB) explains that “practice and procedure before the Board will not change.” And that, “[t]he Board will continue its current briefing practice as to the types, timing, and page limits of briefs.”

As pointed out previously, removing the burden from the Patent Owner Motion to Amend will aid the PTAB in granting far more motions, but ultimately, amendments are not expected to be any more attractive, or common. Continue Reading PTAB: Practice & Procedure Unchanged after Aqua Products

PTAB Expanded Panels Impact Less Than 1% of All AIA Trials

Last week the Court of Appeals for the Federal Circuit (CAFC) issued its decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. (here)  The decision affirmed the USPTO’s Patent Trial & Appeal Board cancellation of certain claims of Nidec’s U.S. patent 7,626,349 (IPR2014-01121 & IPR2015-00762). In this regard, the opinion was rather unremarkable. Of particular interest to PTAB critics, however, was the Court’s discussion of the Board’s expanded panel practices in its concurring opinion.

Although conceding it had no impact on the outcome of the case, the concurrence took issue with the Board’s expansion of a rehearing panel for the stated purpose of reversing the earlier decision.  That is, in order to consistently treat questions of issue joinder under 35 U.S.C. § 315(c), the PTAB expanded a panel to include judges that had ruled differently on the same question of statutory interpretation. As a result, the expanded panel reversed the earlier decision and found issue joinder to be embraced by 315(c). The Federal Circuit signaled a strong distaste of such agency practices.

Critics were quick to lambaste the PTAB’s expanded panel process in Nidec as evidence of a crooked process and an anti-patent bias.  Of course, anyone that has followed this blog knows that to be false. Continue Reading PTAB Expanded Panels: Fact Check

Limitations of Patent Reissue

As provided by 35 U.S.C. § 251, Patent Reissue is a mechanism by which a patent owner may correct an error in an issued patent. A proper reissue application is directed to an error that renders an issued patent wholly, or partly, inoperative. Such an error could be the mere absence of narrower dependent claims. In re Tanaka (CAFC 2011)

Although patent reissue allows for the correction of mistakes in claim scope, the proceeding is not a “do-over” of the original prosecution. For example, claim scope previously surrendered may not be “recaptured” via a broadening patent reissue. This same “public reliance” policy reasoning is utilized in other obscure aspects of patent reissue practice. For example, the Orita doctrine, prevents applicants from obtaining by reissue, claims that because of a requirement for restriction in which they had acquiesced, they could not claim in their patent. Last week, the CAFC explained yet another limitation on patent reissue practice, the “original patent” limitation of patent reissue. 

Antares Pharma, Inc. v. Medac Pharma Inc., (Fed. Cir. 2014), emphasized the original patent requirement of 35 U.S.C. § 251, namely:

Whenever any patent is, through error . . . ,deemed wholly or partly inoperative or invalid. . . by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall . . . reissue the patent for the invention disclosed in the original patent . . . .

35 U.S.C. § 251(a) (emphasis added).

In Antares, the defendant argued that the patent was impermissibly broadened by patent reissue as it had recaptured previously surrendered subject matter. In an attempt to side-step recapture, the patentee argued that the broadened subject matter was an overlooked aspect of the invention, and in fact, was an altogether different invention. This position was ultimately fatal under the “original patent” analysis, as the Court explained:
The original claims are significantly different in scope and coverage than the asserted claims. Claims 1–22 are focused on jet injectors, and every one of those claims contains the “jet injection” limitation. The asserted claims are focused on particular safety features and do not contain the jet injection limitation. Indeed, appellants themselves argue that the asserted reissue claims cover a different invention than that originally claimed * * * * The original specification here does not adequately disclose the later-claimed safety features to meet the [original patent standard]. 

Although safety features were mentioned in the specification, they were never described separately from the jet injector, nor were the particular combinations of safety features claimed on reissue ever disclosed in the specification. Rather, the safety features were serially mentioned as part of the broader conversation: how to build the patented jet injection device *****

These “suggest[ions]” or “indicat[ions]” of alternative inventions are not sufficient to satisfy the original patent requirement of § 251. * * * Nowhere does the specification disclose, in an explicit and unequivocal manner, the particular combinations of safety features claimed on reissue, separate from the jet injection invention. This does not meet the original patent requirement under § 251.

(internal citations omitted)

With the emergence of PTAB patentability trials as a serious road block to patent assertion, patent reissue and patent reexamination are increasingly utilized to refine claims prior to assertion. Where broadening patent reissue is pursued, recapture concerns taken together with the original patent requirement can create quite the Catch-22.

Federal Circuit Unlikely to Open the Door to Discovery via Subpoena in Inter Partes Patent Reexamination

Generally speaking, “discovery” is a litigation process by which information or facts pertinent to a case can be systematically obtained from an opponent or third party prior to trial. Historically discovery has not been permitted in patent reexamination proceedings because, according to the USPTO, patent reexamination does not qualify as a “contested proceeding” in accordance with 35 U.S.C. §§ 23-24. This argument makes perfect sense for ex parte patent reexamination, but perhaps less so for inter partes patent reexamination proceedings. Since much of the case law denying discovery in patent reexamination came about decades ago in the ex parte patent reexamination context, it is surprising that it took this long for the applicability of discovery in the inter partes context to make it up to the CAFC. (although the lack of discovery in inter partes patent reexamination has been recently emphasized in Lingamfelter v. Kappos)

Last week the Federal Circuit heard oral argument (here) in Abbott Laboratories v. Cordis Corp. (12-1244) on the issue of whether parties can subpoena documents or testimony in an inter partes patent reexamination proceeding before the USPTO under 35 U.S.C. § 24.   By way of background, §24 provides as follows:

The clerk of any United States court for the district wherein testimony is to be taken for use in any contested case in the Patent and Trademark Office, shall, upon the application of any party thereto, issue a subpoena for any witness residing or being within such district, commanding him to appear and testify before an officer in such district authorized to take depositions and affidavits, at the time and place stated in the subpoena.

Cordis, the patent owner, sought subpoenas under §24 seeking discovery to rebut the declarations submitted by requesters Abbott Laboratories and Boston Scientific on the question of obviousness. Abbott filed a motion to quash the subpoenas, arguing among other things that 35 U.S.C. § 24 does not authorize the issuance of subpoenas because inter partes patent reexaminations are not “contested cases” within the meaning of the statute.

During the oral argument Abbott appeared to have the upper hand, and by a significant margin. Abbott and the amicus Solicitor pointed out that the legislative history of the America invents act (AIA) clearly explains that patent reexamination has been considered an “examinational” proceeding whereas the new post grant proceedings are adjudicative in nature. The AIA provides discovery for these new adjudicative proceedings because they are contested cases that are heard before Administrative Patent Judges of the Patent Trial & Appeal Board, whereas examinational proceedings like reissue and reexamination are essentially an extension of the examination phase and overseen by patent examiners. The Solicitor emphasized that the PTO has declined to promulgate rules allowing the issuance of subpoenas in reexaminations precisely because they are examination proceedings conducted before examiners and not contested cases held before administrative law judges. The Solicitor also made the interesting point that under Cordis’ broad definition of “contested case” even ex parte reexaminations would be subject to §24, which would create the anomalous result that requesters and patent owners would be entitled to obtain discovery via subpoena in ex parte reexaminations.

These arguments are consistent with the Board’s historic treatment of reexaminations as compared to patent interferences. Patent interferences have been conducted as contested cases in which limited discovery is permitted.

It is expected that the Federal Circuit will affirm the district court’s decision to quash the subpoena and decline to open the door to discovery via subpoena in reexamination proceedings. For the parties to the approximately 1,000 inter partes reexaminations still pending, discovery will likely be available only if the challenger seeks inter partes review or is able to pursue such in a parallel litigation.