As we have discussed (here and here), owners of pre-AIA patents may be able to “swear behind” alleged prior art references by providing evidence of an earlier invention date, but the inventors’ testimony concerning conception of the invention must be corroborated by independent evidence. In Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc., No. 2018-1259 (Fed. Cir. Jul. 2, 2019), the patent owner was unable to swear behind alleged prior art because it did not provide sufficient corroborating evidence.
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Estoppel May Arise After Trial
In an unusual fact situation, Judge Andrews of the U.S. District Court for the District of Delaware held that estoppel stemming from a Final Written Decision of the PTAB could arise even if issued after trial where the court has not yet entered final judgment on the relevant ground. Novartis Pharmaceuticals Corp. v. Par Pharmaceutical Inc., Case No. 14cv1289 (D. Del. April 11, 2019).
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Is that Prior Art?
The nature of any inter partes dispute apparently is to engage in even a seemingly mundane dispute. After all, that’s the dispute that may lead you to success, right? Perhaps then there is nothing surprising in an April 3, 2019, Patent Trial and Appeal Board order concerned about whether a book qualifies as prior art. That order, issued by the Board’s new “Precedential Opinion Panel,” grants an aggrieved petitioner’s request for rehearing of an earlier Board decision refusing to institute inter partes review because the petitioner apparently did not establish a book bearing a 1990 (or 1991) copyright date was publicly available before the 1995 date on which the application for the subject patent was filed. Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039 (Apr. 1, 2019) (order).
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PTAB Must Consider All Grounds Raised in an Instituted Petition
In AC Technologies S.A. v. Amazon.com, the Federal Circuit confirmed the PTO’s interpretation of SAS Institute, Inc. v. Iancu, 138 S.Ct. 1348, 1355 (2018) (discussed in greater detail here) requiring that the PTAB address each ground of invalidity raised in an instituted petition in its final written decision. 912 F.3d 1358 (Fed. Cir. 2019).
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Patent Office Announces New Amendments Procedure for AIA Trials
For AIA trials instituted on or after March 15, 2019, the patent owner may opt-in to a pilot program the Patent Office implemented for motion to amend (“MTA”) practice and procedures in the PTAB’s administration of these trials. Today’s Federal Register (link) includes the Patent Office’s explanation of the program, which it proposed in October 2018. The Office’s explanation also includes its reply to comments the public offered in response to the proposal. Generally, the comments supported the proposed program, but expressed concerns over the tight timelines proposed. The implemented program appears to address those concerns.
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Newly Appointed Chief Judge Scott Boalick Addresses PTAB Bar Association
Addressing the PTAB Bar Association Conference in its opening session, newly appointed Chief Judge Scott Boalick explained that his goal as Chief Judge is to bring stability to the board and increase predictability. He wants all parties coming to the Board to feel that they have gotten a fair shake and that the procedures are fair.
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“Hearsay & Authentication” From the PTAB Judges’ Perspective
The PTAB recently hosted a Boardside Chat webinar on the topic of hearsay and authentication before the Board. The Administrative Patent Judges that presented were Michael Zecher, Tom Giannetti and Grace Obermann. A PowerPoint of the presentation can be found here and the Boardside Chat schedule can be found here.
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Petitioner Has Burden of Persuasion on Real Party in Interest
Under 35 U.S.C. § 312(a), an IPR petition must identify “all real parties in interest,” and, an IPR petition is time-barred under 35 U.S.C. § 315(b) if “filed more than 1 year after the date on which the petitioner, the real party in interest, or a privy of the petitioner is served with a complaint alleging infringement of the patent.” As we have discussed, PTAB decisions on whether § 315(b) has been satisfied are reviewable on appeal.
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Rule Changes Will Advance a Famous Judge Rich Axiom
For AIA trial petitions filed after November 12, 2018, the Patent Trial and Appeal Board will construe claims challenged and proposed to be amended (narrowed) in these proceedings using the same claim construction standard that is used to construe the claim in a civil action in federal district court. See Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). In these trials, the Board will also consider claim construction determinations made in proceedings in district courts or the International Trade Commission. A recent Federal Register notice includes the text of rules the Patent Office revised to implement these changes.
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One Year Time Bar Runs from Date of Service, Regardless of Whether Suit is Dismissed
Update: The Supreme Court issued a decision on April 20, 2020 holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is closely related to its decision whether to institute inter partes review and is therefore rendered nonappealable by§314(d).”
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Update: The Supreme Court issued an order on June 24, 2019, granting a petition for a writ of certiorari to review the Federal Circuit’s judgment in Dex Media, Inc. v. Click-to-Call Technologies, LP, 899 F.3d 1321 (Fed. Cir. 2018). The Court will decide “[w]hether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review upon finding that § 315(b)’s time bar did not apply.” The Court’s docket number for this case is 18-916, and its decision may be expected during the October 2019 term.
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Original Post: The Federal Circuit recently held that the statutory time bar in 35 U.S.C. § 315(b) precludes the PTAB from deciding an IPR petition filed more than one year after any of the petitioners have been served with a complaint alleging patent infringement, even if that complaint was voluntarily dismissed. Click-To-Call Technologies, LP v. Ingenio, Inc., et al., Case no. 2015-1242, 2018 WL 3893119 (Fed. Cir. Aug 16, 2018).
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