Revamped PTAB Trial Practice Guide Holds Surprises

The Patent Trial and Appeal Board (“PTAB”) issued its initial Trial Practice Guide in August 2012, shortly before America Invents Act (“AIA”) post-grant proceedings became available.  That Guide had not been supplemented or updated – other than through substantive decisions of the PTAB  – until the PTAB’s release of a revision on August 10, which takes the form of a supplement that must be read together with the original Guide.  Because the supplemental Guide is not subject to a notice and comment period, it is effective immediately, and the Office notes that future updates to the Guide will be provided “on a section-by-section, rolling basis, rather than a single, omnibus update addressing all aspects of the current Practice Guide.”  The revamped Guide addresses (1) consideration of various non-exclusive factors in the determination of whether to institute a trial, (2) providing for sur-replies to principal briefs as a matter of right, (3) the distinction between motions to exclude and motions to strike, and the proper use of each, (4) procedures for oral hearing before the Board, including the use of live testimony, sur-rebuttal, and default time for the hearing, and (5) providing for a pre-hearing conference and potential early resolution of issues.  All of these areas are important to study and may warrant new strategies, but perhaps the biggest surprise is the Patent Owner’s sur-reply now allowed as a matter of right.

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Constitutionality of PTAB Judge Appointments Challenged In Polaris IPR Appeal

In the wake of Lucia v. SEC, where the Supreme Court held in June 2018 that Administrative Law Judges (ALJs) at the SEC are “officers” subject to the Appointments Clause, there have been challenges to the constitutionality of Administrative Patent Judges (APJs) at the PTAB in IPR proceedings.  In 2008, the Patent Act was amended to require APJ appointment by the Secretary of Commerce.[i] Commentators had argued that APJs were “inferior officers,” and the structural rearrangement proactively cured that potential constitutional defect.  But in a pending appeal of an IPR to the Federal Circuit, at least one litigant has argued further that APJs are not merely inferior officers but “principal officers.”[ii] If that is correct, APJs would require appointment by the President and confirmation by the Senate.[iii] (Alternatively, the principal-officer status might be changed if the PTAB were restructured to give the Director explicit direct oversight of each case. Or the for-cause removal provision might be altered to at-will removal.) This would mean more political control over APJ practices. Any IPRs in which an Appointments Clause challenge had been timely made would likely require a new hearing before a duly appointed panel.  However, the majority’s reasoning in Lucia suggests that the issue would need to be raised while the proceeding was pending and that it would not be retroactive to resolved matters. Continue reading this entry

Getting The Last Word: Requesting a Patent Owner Sur-Reply in AIA-PTAB Proceedings

Practitioners are familiar with the typical submission process in America Invents Act (“AIA”) – Patent Trial and Appeals Board (“PTAB”) proceedings.  First, the Petition is filed, and then the Patent Owner may submit a Patent Owner Preliminary Response. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48757-58.  Subsequent to that filing, the PTAB will institute or not institute trial based on the presented grounds of unpatentability. Id.

If trial has been instituted, the Patent Owner will submit its full Patent Owner Response as a matter of right.[1] Id.  Thereafter, also as of right, Petitioner will submit its Reply.[2] Id.  This is where the issue of “new” evidence or argument arises.  Not surprisingly, Patent Owners have often sought permission from the PTAB to submit a sur-reply, for the purpose of addressing any arguments or evidence they believe is “new.”  Continue reading this entry

Federal Circuit Affirms PTAB Ruling That Tribal Immunity Does Not Apply To IPRs

On July 20, 2018, the Federal Circuit held in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals that tribal sovereign immunity does not prevent IPR on a patent assigned to a tribe asserting such immunity.  The court expressly declined to make any decision about state sovereign immunity in this case.  The PTAB has found that state sovereign immunity can prevent IPR, although it may be waived if the patent is enforced in district court by the assignee (see “Expanded PTAB Panel Finds Sovereign Immunity Waived By Patent Enforcement”).  Continue reading this entry

Proposed Legislation Would Require Choice Between ANDA Litigation Or AIA Challenges

On June 13, 2018, Sen. Hatch (R-Utah) introduced an amendment that would require generic ANDA filers to choose between litigating validity in Hatch-Waxman district court litigation or an AIA challenge (IPR or PGR), and on June 14th, the Senate Judiciary Committee voted 16-5 to bring it to the Senate floor for a vote.  Presently, generic ANDA filers can pursue challenges using both of these routes at the same time, although some courts may stay litigation pending the outcome of the AIA challenge.  The proposed legislation would modify the Food & Drug Cosmetic Act (not AIA) to require the ANDA filer to confirm at the time of making its Par. IV certification that neither the ANDA applicant nor any party in privity has filed, or will file, a petition to institute an IPR or PGR challenge of any patent claiming the reference listed drug.

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PTAB Releases Frequently Asked Questions about the implications of SAS on AIA trial proceedings

The PTAB has released a Frequently Asked Questions and Answers document.  The Questions and Answers are grouped into the following categories:

  • Effect of SAS on AIA proceedings generally
  • Effect of SAS on on-going partially-instituted proceedings
  • Effect of SAS on instituted challenges previously denied for statutory reasons
  • Effect of SAS on future challenges that could be denied for statutory reasons
  • Content of institution decisions post-SAS
  • For additional questions about SAS

The PTAB has also indicated the FAQs will be updated periodically and encourages stakeholders to continue submitting questions.

New informative order providing guidance on motions to amend

In view of the Federal Circuit Decision in Aqua Products, the PTAB has de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and has de-designated as informative Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26).  As a replacement, Western Digital Corp. v. SPEX Techs., Inc., IPR2018-00082, -00084 (PTAB Apr. 25, 2018) (Paper 13) has been designated as informative, which provides guidance on motions to amend.  More information can be found in the USPTO press release.

 

SAS Institute: One Month In

We are now a little over a month since the Supreme Court issued its decision in SAS Institute v. Iancu, where the Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged.”  As previously reported, the PTAB issued  Guidance on the impact of SAS on AIA trial proceedings and immediately started implementing its interpretation of SAS Institute, including the issuance of “order[s] supplementing [an] institution decision” for partially instituted proceedings to include all challenged claims and all challenged grounds.  As of the time of this post, the authors were able to identify over 300 of these types of orders – the last of which issued on May 24.  At this point, it is expected the vast majority of orders modifying the scope of trial have been issued by the PTAB. Continue reading this entry

SAS Institute: Two Weeks In

As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged.”  The primary significance of SAS is its impact on the Patent Trial and Appeal Board’s (“PTAB”) prior partial institution practice. See e.g., 37 C.F.R. § 42.108(a) (“the Board may authorize the review to proceed on all or some of the challenged claims and on all or some of the grounds of unpatentability asserted for each claim.”).  Under SAS¸ and specifically as to claims, the PTAB is no longer able to institute on only some of the challenged claims and any final written decision must address each such claim. Continue reading this entry

USPTO Announces Notice of Proposed Rulemaking for Claim Construction Standard used in PTAB Proceedings

Today, the USPTO announced its Notice of Proposed Rulemaking for the Claim Construction Standard used in PTAB Proceedings.  As summarized in the Notice:

The United States Patent and Trademark Office (“USPTO” or “Office”) proposes changes to the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and the transitional program for covered business method patents (“CBM”) proceedings before the Patent Trial and Appeal Board (“PTAB” or “Board”). In particular, the Office proposes to replace the broadest reasonable interpretation (“BRI”) standard for construing unexpired patent claims and proposed claims in these trial proceedings with a standard that is the same as the standard applied in federal district courts and International Trade Commission (“ITC”) proceedings. 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 IPR, PGR, or CBM proceeding.