Standing Dispute Highlights 315(e)(2) Estoppel Concern

Article III standing has been a problem for certain petitioners seeking review of adverse Patent Trial & Appeal Board (PTAB) AIA trial rulings. This is because, while the AIA statutes provide that anyone other than a patent owner may challenge a patent at the PTAB, Article III standing is necessary for petitioners to appeal adverse PTAB decisions to the Federal Circuit. Phigenix, Inc. v. ImmunoGen, Inc.  Since Phigenix, there have been a number of Federal Circuit decisions exploring the degree of harm necessary to convey Article III standing in this context.

Earlier this week, the Federal Circuit analyzed “competitor harm” as a basis for Article III standing along with the potential of adverse estoppel impact of 35 U.S.C. §315(e)(2) on the petitioner.. While the competitor harm analysis may be interesting from an academic standpoint, the more meaningful discussion for practitioners is the Court’s commentary on the 315(e) estoppel impact for such petitioners. 
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Simultaneous/Redundant Petitions Attacking Same Claims Questioned

The Patent Trial & Appeal Board’s (PTAB) new focus on institution equities of serial petition challenges was the most significant development of 2018. Since that time the Board has expanded its equitable focus beyond follow-on petitions and similarly situated defendants to consider parallel litigation timing.

This week, the Board tackled a new consideration. That is, whether it makes sense from a fairness perspective to give an IPR petitioner 5 bites at the same apple. I have been expecting this one.
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Thursday Webinar Addresses Parallel Post-Grant Proceedings

This Thursday, April 25th, from noon to 1 p.m. ET, the Patent Trial and Appeal Board (PTAB) and the Central Reexamination Unit (CRU) will host a Boardside Chat webinar presenting information on the interplay of AIA trial proceedings under the America Invents Act (AIA), reissue applications, and reexamination proceedings.

CAFC Upholds Injunction to Shut Down PTAB

The AIA statutes provide that a person who is not the owner of a patent, can challenge the patent at the Patent Trial & Appeal Board (PTAB). Pursuant to the bright lines drawn by the statute, the PTAB has accepted AIA challenges from non-owners where traditional defenses may have prevented such challenges in other fora. For example, while assignor estoppel might preclude a patent validity challenge in a district court, the PTAB accepts such challenges. In affirming this practice, the Federal Circuit explained that common-law doctrines are subject to abrogation of the AIA statutes.

A more recent argument has been that private agreement, such as a forum selection clause, can divest the PTAB of jurisdiction of a patent validity dispute. For its part, the PTAB has disagreed to date…..the District court on the other hand, has attempted to enjoin petitioners from continuing that the PTAB in such circumstances. Today, the Federal Circuit has backed the injunction strategy, effectively shutting down the PTAB.
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Timing of Estoppel Unimportant

Last week in Novartis Pharmaceutical Corp. v. Par Pharmaceutical Inc., Nos. 14-1289-RGA, 14-1494-RGA, 15-0078-RGA (D. Del. Apr. 11, 2019), (here) the court addressed a motion to estop defendants from asserting invalidity arguments based on prior art references already presented at trial. The motion argued that, in related IPR proceedings brought while litigation was pending, the same defendants challenged and failed to prove the unpatentability of overlapping claims. The Board’s Final Written Decision (FWD) issued during the appeal. (later remanded back to D.Del)

Novartis argued that, irrespective of the timing of the FWD, that the invalidity defenses and counterclaims presented at trial by defendants should be estopped.
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Director Encouraged to Do What He is Already Doing?

At several bar events over the past few weeks, the Director has made clear that the agency is “looking into” ways to address certain serial petitioning practices beyond that of the “follow-on” scenario. For example, where multiple petitions are filed at the same time for the sole purpose of multiplying the number of grounds for an AIA trial proceeding.

This past Tuesday, the Senate Judiciary Committee sent a letter to Director Iancu seemingly asking him to do what he is already doing.  And for him to respond to proposed directives (transparently presented in the form of questions) on accomplishing such.
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Unchallenged Claim Falls on Summary Judgement

Back in 2016, I flagged a few district court decisions that leveraged Patent Trial & Appeal Board (PTAB) fact-finding on summary determination. These decisions weighed the fact finding of the expert agency as “compelling evidence” and noted the Board”s “expertise in evaluating prior art and assessing patent validity.”  While crediting the fact finding on common technical issues, these decisions stopped short of finding outright issue preclusion based upon the earlier PTAB proceeding.

However in some instances, PTAB determinations might be leveraged to attack claims that slipped through the PTAB net.
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Boardside Chat This Wednesday

This Wednesday, April 10, from noon to 1 p.m. ET, the Patent Trial & Appeal Board (PTAB) is hosting a Boardside Chat webinar about the new pilot program for motions to amend in AIA trials. Deputy Chief Judge Jackie Bonilla and Lead Judge Jessica Kaiser will present.

The new Pilot program

Justice Dept. Defends Challenge to APJ Appointments

The latest constitutional challenge to the Patent Trial & Appeal Board (PTAB) involves the Appointments Clause.

The Appointments Clause of the U.S. Constitution has been interpreted to require that only “Principal Officers” of the United States — appointed by the President and confirmed by the Senate — can exercise “significant authority” pursuant to the laws of the United States. What is significant authority, you ask?  In a nutshell, the final word of the U.S. government.

So the debate in the now pending petition for certiorari in Polaris Innovations Ltd. v. Kingston Tech. (and in other petitions for cert raising the same issue) has become whether the APJs of the PTAB are superior officers rendering the final word of the government in PTAB trial proceedings, or whether they are instead functioning as “inferior officers” subject to the control of the Director (a political appointee, confirmed by the Senate).

The Government weighed in earlier this week on these petitions for certiorari.
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