The Board recently denied a post grant review petition because the challenge was deemed redundant of the Patent Office’s earlier examination of similar claims in a related application. Live Nation Entertainment, Inc. v. Complete Entertainment Resources B.V., Case No. PGR2017-00038 (PTAB January 16, 2018). The decision offers a cautionary tale for patent practitioners. The Board learned of the earlier examination from the patent owner, not the petitioner who was obliged to advise the Board of “related matters.”
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The United States Can Have Standing in AIA Proceedings
Update: On June 10, 2019, the Supreme Court issued a decision, 6-3, reversing the Federal Circuit’s judgment and remanding the case for further proceedings. The Court held that “a federal agency is not a ‘person’ who may petition for post-issuance review under the AIA.” On August 9, 2019, the Federal Circuit issued an order vacating the PTAB’s decision and remanding with instructions that the PTAB dismiss the CBM proceeding for lack of jurisdiction.
PTABWatch Takeaway: When “sued for infringement” within the meaning of 28 U.S.C. § 1498(a), the United States has standing to petition the Patent Office to institute Covered Business Method (CBM) review. Return Mail v. U.S. Postal Service, Appeal 2016-1502 (Fed. Cir. Aug. 28, 2017)
Background
Patentee, Return Mail, Inc., filed suit in the U.S. Court of Federal Claims Court alleging that the United States, through the actions of the United States Postal Service, used without license the subject matter claimed in U.S. Pat. No. 6,826,548.
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Pay-Per-Click Patent Found Ineligible Under Section 101
In a final written decision issued on April 24, 2017, the PTAB canceled all four challenged claims of U.S. Patent No. 8,671,057, directed to detecting invalid and fraudulent clicks in pay-per-click web advertising (Google Inc. v. Zuili, CBM2016-00008 (Paper 56)). The PTAB found all four claims unpatentable under 35 U.S.C § 101, and obvious under 35 U.S.C. § 103 over a combination two prior art documents related to a study on online advertising reporting and auditing.
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PTAB Should Have Canceled All Challenged Claims in CBM Reviews
In Apple, Inc. v. Ameranth, Inc. (Fed. Cir. 2016), the Federal Circuit reviewed the final written decisions in CBM reviews of three related patents owned by Ameranth, Inc., directed to computerized systems for generating and displaying menus for use in the restaurant industry. The court determined that the PTAB properly construed all disputed claim terms, determined that the patents are CBM patents, and determined that most challenged claims were unpatentable under § 101, but that the PTAB erred in concluding that some dependent claims were not unpatentable under § 101.
More specifically, the claims in the disputed Ameranth patents are directed to a “first menu that has categories and items, and software that can generate a second menu from the first menu by allowing categories and items to be selected.”
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The Three-Front Assault: PeroxyChem Uses IPR, PGR and District Court to Challenge Opponent
In what could become a common patent challenge strategy, PeroxyChem, a chemical company that sells products useful in water and soil remediation, has employed a three-front assault—combining the relatively young post-grant review procedure, with an IPR and litigation–to take on one of its competitors, Innovative Environmental Technologies (IET). Litigation together with an IPR has become a rather common means to challenge a competitor’s patent. However, post grant review is gaining in popularity among litigants, adding to the available strategies of overcoming potential barriers to market entry for companies. For example, while 12 Petitions for PGR were filed in all of 2015, 15 have been filed so far in the first half of 2016.
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PTAB Concludes Database Patent Claims Are Ineligible under Section 101 Despite Enfish
Notwithstanding the Federal Circuit’s Enfish warning that “we do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract,” in Informatica Corp. v. Protegrity Corp., the PTAB cancelled claims 1-8 and 18-53 of U.S. Patent No. 6,321,201 under Section 101 because the claims relating to a data security system for databases were directed at an abstract idea and recite ineligible subject matter. Informatica Corp. v. Protegrity Corp., CBM2015-00021, Paper 38, (“Dec”) (PTAB May 31, 2016); Enfish, LLC v. Microsoft Corp., No. 2015-1244, Slip Op. at 11 (Fed. Cir. May 12, 2016). The Board also determined that some of these claims were also unpatentable under Section 103. Focusing on the Board’s decision regarding Section 101, the Board held: (1) the ’201 patent was a covered business method patent, (2) Section 101 is a proper ground for review for covered business methods patents, and (3) the claims were directed at an abstract idea.
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Patent Applicants Who Appeal Must Wait Their Turn with the PTAB
Biotechnology patent applicants dissatisfied with the examination of their patent applications can look to the PTAB for relief by filing an appeal – but they will need to be very, very patient. The procedures created by the America Invents Act (AIA) for challenging U.S. patents – inter partes review, post grant review, and covered business methods – have transformed strategies for contesting the validity of patents. In just a few years, the Patent Trial and Appeal Board (PTAB) has become one of the busiest forums for contesting patent validity, due in part because the PTAB must complete its review within 18 months of receiving a petition. Patent applicants dissatisfied with a patent examiner’s rejection of their patent application may appeal the rejections to the same PTAB that administers AIA trials. But, these applicants cannot expect the PTAB to decide their appeal with the same timeliness with which the PTAB completes AIA trials.
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Patent Ineligibility Under §101 Continues Slow Ooze Over More Territory
Biotech companies have increasingly found themselves the target of IPRs, and we have discussed this in some of our past posts. Meanwhile, in the District Courts, biotech companies are defending against a new wave of challenges to the patent-eligibility of their inventions under 35 U.S.C. § 101. While challenges under § 101 cannot be raised as grounds in an IPR, the PTAB has required proof of eligibility where patent owners have sought to amend their claims during IPRs. In at least two final written decisions in IPRs, the PTAB denied motions to amend claims because the PTAB concluded the amended claims recited subject matter ineligible for a patent under § 101 and in view of previous rulings in related district court proceedings that claims of similar scope were ineligible subject matter.
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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.
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PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”
Shakespeare’s Juliet famously observes, “What’s in a name? That which we call a rose by any other name would smell as sweet.” The PTAB begs to differ. While a generic computing device may not render abstract claims patentable, introduce it with a fancy nom de guerre and you have got yourself patentable subject matter.
Continue Reading PTAB to Shakespeare: “ ‘What’s in a Name?’ Are you Kidding? Everything!”