The Federal Circuit on June 14 affirmed Patent Office decisions in inter partes review (IPR) proceedings canceling patents the University of Minnesota owned, concluding that “state sovereign immunity does not apply to these proceedings.” The court’s conclusion is not limited to instances where, for example, a state university waives its sovereign immunity by asserting a patent in federal court proceedings. One broad import of the court’s holding therefore is that all state university patents are vulnerable to attack in PTO proceedings. Regents of the Univ. of Minn. v. LSI Corp., Appeal 2018-1559 (Fed. Cir. June 14, 2019); Regents of the Univ. of Minn. v. Ericsson Inc., Appeals 2018-1560 et seq. (Fed. Cir. June 14, 2019).
Estoppel Remains Malleable
A few months ago, in BTG International Ltd. v. Amneal Pharmaceuticals LLC, the Federal Circuit invited the Patent Office’s views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2). We noted then that this is an estoppel a district court may apply, but the Patent Office may not. In response to the court’s invitation, the Patent Office said that a court may apply this statutory estoppel not only to petitioners who lose an IPR, but also to those who prevail. The Office conceded that estopping prevailing IPR petitioners “leads to the counterintuitive result that a district court would not be able to consider invalidity arguments that the Board found persuasive.” But the Office said that this will have no practical effect in most cases.
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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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Have You Included Specific Reference to Every Document in Your Priority Claim?
Incorporation by reference is not sufficient to satisfy specific reference to each prior-filed patent application to be entitled to an earlier priority date (Droplets, Inc. v. E*Trade Bank (887 F.3d 1309 (2018)). This appeal to the Federal Circuit stems from a dispute between Droplets, Inc. and E*TRADE Bank, over a patent (U.S. Patent No. 8,402,115 (“the ’115 Patent”)) owned by Droplets. At issue is the effective filing date of Droplets’ ‘115 patent.
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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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What Qualifies As Prior Art?
This blog has previously reported on several PTAB and Federal Circuit decisions concerning what does and does not qualify as prior art:
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Federal Circuit Invites Patent Office to Open Pandora’s Box
It is puzzling, if not troubling, that the Federal Circuit recently invited (link) the Patent Office to submit a brief expressing its views on the scope of the petitioner estoppel under 35 U.S.C. § 315(e)(2), a veritable Pandora’s Box. It is puzzling because only the judiciary can apply this estoppel provision, the Patent Office cannot. It is troubling not necessarily because the Patent Office unsurprisingly accepted the court’s invitation, but because it then answered in the affirmative a broad question the court did not pose: “whether section 315(e)(2) bars a successful inter partes review petitioner from making the same arguments in district court that it prevailed on in the inter partes review.” By inviting the court to conclude as much, the Patent Office has identified a statutory gaffe that may require parties to reevaluate the risks and rewards in pursuing inter partes review in parallel with district court actions.
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