The Patent Trial and Appeal Board has received 37 petitions for post grant review of patents issuing from examination conducted by the Patent Office’s Group Art Unit 1600. The Board has issued four final written decisions thus far. We discussed the first final written decision here, where all claims were upheld in the face of a challenge based on obviousness grounds only. Three of the four final written decisions issued so far on biotech/pharma subject matter dealt only with art-based challenges. Grünenthal GmbH v. Antecip Bioventures II LLC, Case PGR2017-00008 (June 22, 2018) marks the first PGR final written decision addressing written description of a patent arising from Art Unit 1600; all claims were held to be unpatentable under Section 112.
Continue Reading PTAB Issues First Biotech/Pharma PGR Final Written Decision Based On Written Description Challenge
When is There Standing to Appeal a PGR Final Written Decision?
In Altaire Pharm., Inc. v. Paragon Biotek, Inc., Case No. 2017-1487 (Fed. Cir. May 2, 2018), the Federal Circuit reversed in part a PGR final written decision that upheld the patentability of challenged claims, and determined that a risk of a future lawsuit for patent infringement may be sufficient to establish Article III standing for the appeal.
Under Supreme Court precedent, Article III standing requires: (1) a concrete and particularized injury, (2) caused by the challenged conduct, (3) which can be redressed by a judicial decision. Spokeo, Inc. v. Robins, 136 S. Ct. 1540 (2016). Ironically, a party that has not been charged with infringement may have sufficient standing to file a petition with the PTAB, but lack standing to appeal the PTAB’s final decision to an Article III court.
Continue Reading When is There Standing to Appeal a PGR Final Written Decision?
IPR and Estoppel after SAS Institute
The Supreme Court held on April 24, 2018 that if the Patent Office institutes and inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. SAS Institute, Inc. v. Iancu, (discussed in greater detail here). Within days, the Patent Office issued Guidance on the impact of SAS on AIA Trial Proceedings explaining the procedures it intends to implement in view of the Court’s decision. The resulting changes are likely to be extensive, both in IPR practice and in the scope of estoppel that litigations in parallel proceedings will need to consider.
Continue Reading IPR and Estoppel after SAS Institute
Patent Office Proposes to Jettison BRI in AIA Trials
The Patent Office today issued a press release of its notice of proposed rulemaking that would replace the broadest reasonable interpretation standard the Patent Trial and Appeal Board applies to construe unexpired patent claims and proposed substitute (amended) claims in AIA trial proceedings with the Phillips standard applied in patent cases before federal district courts and the International Trade Commission (ITC). The Office also proposes to amend the rules “to add that the Office will consider any prior claim construction determination concerning a term of the involved claim in a civil action, or an ITC proceeding, that is timely made of record in an [AIA trial] proceeding.” Any proposed changes adopted in a final rule would be applied retroactively to pending AIA trials.
Continue Reading Patent Office Proposes to Jettison BRI in AIA Trials
Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims
On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal Circuit’s judgment, which upheld the Patent Trial and Appeal Board’s (PTAB) common practice of instituting review on some, but not all challenged claims, and then issuing a final written decision addressing only the claims for which review was instituted.
Continue Reading Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims
PTAB Cases You Should Know
The Federal Circuit, Supreme Court, and PTAB have been addressing a number of big issues in 2017 and 2018. Here are the cases you should know.
Continue Reading PTAB Cases You Should Know
Petitioners Will Pay More for Immensely Popular AIA Trials
In the November 14, 2017, Federal Register, the Patent Office issued its final rule setting and adjusting the fees the Office charges for its products and services, including relatively substantial increases for standard AIA trial fees (as shown below). As a simple example, a petitioner challenging all claims of a patent containing 30 claims will pay 37% more in fees for inter partes review ($42,500 v. $31,000), and 33% more in fees for post grant or covered business method review ($54,125 v. $40,750). These AIA trial fees become effective on January 16, 2018.
Continue Reading Petitioners Will Pay More for Immensely Popular AIA Trials
Patent Agent Privilege Recognized in Final Rulemaking Issued by USPTO
On November 7, 2017, the USPTO issued a Final Rule recognizing that communications between U.S. and foreign patent practitioners and their clients that are reasonably necessary and incident to the scope of the patent practitioners’ authority shall receive the same protections of privilege under Federal Law as if the communication were between a client and a U.S. attorney. 82 Fed. Reg. 51570-75 (Nov. 7, 2017). The privilege extends to communications during all aspects of USPTO practice, including traditional prosecution as well as PTAB proceedings. See 82 Fed. Reg. at 51571 (“the purpose of the rule is to protect any communication with authorized counsel from discovery in PTAB, not just communication about the instant proceedings”). The final rule is effective December 7, 2017.
Continue Reading Patent Agent Privilege Recognized in Final Rulemaking Issued by USPTO
PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged
On October 24, 2017, the PTAB held its inaugural “Chat with the Chief” webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent. The PTAB sought to address concerns that have been raised by patent owners that challengers just keep filing petitions until something sticks, and that petitioners presenting multiple petitions unfairly gain an advantage by obtaining information from the Patent Owner’s response to the first petition or the Board’s Institution Decision that help provide a roadmap for the subsequent petition. The PTAB presents results from an internal study that appears intended to alleviate these concerns.
Continue Reading PTAB says 58% of Patents Survive Post-grant Proceedings Unchanged
Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate. The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress. Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial proceedings at the PTAB. Enactment of this Act would severely diminish the usefulness of AIA proceedings.
Continue Reading Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings