In a recent appeal from a PTAB final written decision, the Federal Circuit determined that a patentee was not denied notice or an opportunity to respond to references cited in the final written decision as representing the state of the art, but that were not the basis for a grounds for institution. (Genzyme Therapeutic Prods. Ltd. v BioMarin Pharm. Inc., Appeal Nos. 2015-1720, -1721 (Fed. Circ., June 14, 2016)). The court concluded that there is no requirement, either in the PTAB’s regulations, in the Administrative Procedure Act (APA), or as a matter of due process, for the institution decision to anticipate and set forth every legal or factual issue that might arise during the trial, and that the PTAB acted properly in citing the additional references.
Continue Reading Federal Circuit Confirms PTAB Can Cite Prior Art in IPR Final Decision That Was Not In Grounds Of Institution
PTAB Applies Interference Estoppel to Deny IPR Grounds
A judgment in an interference disposes of all issues that were, or by motion could have properly been, raised and decided. A losing party who could have properly moved for relief on an issue, but did not so move, may not take action in the Patent Office after the judgment that is inconsistent with that party’s failure to move. 37 C.F.R. § 41.127. This is known as “interference estoppel,” and was recently applied by the PTAB in partially denying an IPR petition. See Adama Makhteshim Ltd. v. Finchimica S.p.A., IPR2016-00577 (PTAB May 24, 2016) (order partially instituting IPR). The decision is important because it is a rare example of the PTAB’s consideration and application of interference estoppel to other Patent Office proceedings, including AIA trials.
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The PTAB Has No Sympathy for the Last Minute Filer
Institution was denied in two IPR proceedings on the grounds that the petitions were filed more than one year after petitioner was served with a complaint alleging patent infringement. The documents were electronically filed but proof of payment of filing fees were one minute and nine minutes late, respectively. Additionally service had not been completed before the midnight deadline.
Continue Reading The PTAB Has No Sympathy for the Last Minute Filer
Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. Lee
The much anticipated argument in Cuozzo Speed Technologies, LLC v. Lee occurred Monday, April 25, 2016 before the United States Supreme Court. One can glean some insight from the Justices’ questions and remarks, but the ultimate outcome in this seminal decision remains uncertain. The following reflects the tenor of the remarks of seven of the Justices’ who spoke during oral argument. In keeping with his much reported practice at these arguments, Justice Thomas remained mute. The following discussion focuses exclusively on the arguments concerning whether or not the PTAB may employ the “broadest reasonable construction” standard in IPRs.
Continue Reading Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. Lee
The PTAB Vaccine: Institution of IPR Protects Against Willfulness Claim
On April 8, 2016, the U.S. District Court for the District of Colorado overturned a jury’s finding that defendant’s infringement was willful, relying in part on the fact that the PTAB had elected to institute inter partes review of one of the asserted patents. We have previously reported on a number of District Court decisions that have addressed whether, and in what circumstances, the denial of an IPR petition may serve as evidence. The Colorado court’s decision appears to be the first to rely upon evidence that the PTAB instituted review to conclude, as a matter of law, that a defendant’s defenses were “objectively reasonable.”
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No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review
NRT Technology Corporation was not successful in petitioning the PTAB to institute CBM review of U.S. Patent No. 6,081,792, but was successful in moving a district court to dismiss an infringement action concerning the same patent on the basis that the patent claims ineligible (abstract) subject matter. Global Cash Access, Inc. v. NRT Tech. Corp., Case No. 2:15-cv-00822 (D. Nev. Mar. 25, 2016) (Order) (granting motion to dismiss). The apparently inconsistent PTAB and district court dispositions will no doubt encourage accused-infringers/putative-petitioners who do not succeed in initiating AIA (trial) review under a low evidentiary burden to try to invalidate the patent in district court under a higher evidentiary standard. Further, these decisions collectively demonstrate how a PTAB’s institution decision denying AIA review can be, without an appeal, effectively nullified by a parallel or later court proceeding.
Continue Reading No Appellate Review, No Matter: District Court Invalidates Patent After the PTAB Denies CBM Review
Failure To Identify The Difference Makes A Difference
There have been a few short articles floating around over the past few years that list the top (usually four or five) mistakes that petitioners have made to doom their IPR/CBM petitions. These articles sometimes refer to the need for the petitioner to pay attention to detail, but then often fail to go into detail about what those details might be.
Continue Reading Failure To Identify The Difference Makes A Difference
Called Third Strike, Is the PTO Director Out? Federal Circuit Rejects
The Federal Circuit has rejected for the third time efforts by the Director of the PTO to preclude appellate review of whether challenged patent claims were properly deemed “covered business methods,” and thereby subject to CBM review. Previously, in Versata Development Group, Inc. v. SAP America, Inc., the Federal Circuit concluded that its jurisdiction to hear appeals of the PTAB’s final written decisions empowered it to examine if challenged claims qualified for CBM review (we reported here). In doing so, the Federal Circuit rejected contrary arguments of the Director who intervened on appeal.
Continue Reading Called Third Strike, Is the PTO Director Out? Federal Circuit Rejects
Petitioner’s Fatal Failure to Dot the “i”s in Allegedly Published Prior Art
In Hewlett-Packard Co. v. U.S. Philips Corp., et al., IPR2015-01505, Paper 16 (Jan. 19, 2016), HP’s Petition asserted that the claims of the patent at issue, US 5,777,992 relating to MPEG audio, were invalid in view of three references, each allegedly a “printed publication”: (1) Chambers; (2) MPEG 89-051; and, (3) MASCAM 1988. In its (optional) response to the Petition the Patent Owner asserted that HP failed to establish that any of these references qualified as a “printed publication.” Indeed, HP did fail – lulled into a sense of security that turned out to be unwarranted – and as a result the PTAB declined to institute an inter partes review of any of the challenged claims.1 This presents another PTAB practice teachable moment.
Continue Reading Petitioner’s Fatal Failure to Dot the “i”s in Allegedly Published Prior Art
Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision
The AIA explicitly bestows the USPTO Director with the authority to institute IPRs and the PTAB with the authority to decide the ultimate question of patent validity. The Director delegated the authority to institute IPRs to the Board, but is it proper to assign the decision to the same APJs that render a final decision? A split panel at the Federal Circuit held that neither the AIA nor the Constitution precludes the same PTAB panel from rendering both institution and final decisions. Ethicon Endo-Surgery, Inc. v. Coviden LP, No. 2014-1771 (Fed. Cir. 2016).
Continue Reading Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision