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.

Supreme Court Upholds Constitutionality Of IPRs In Oil States

Today in Oil States v. Greene’s Energy, the Supreme Court upheld the constitutionality of IPR proceedings, finding that they are a permissible second review of patents conducted by the administrative agency that issues them and not a violation of the right of a property owner to have adjudication of property rights by an Article III court and also comply with the 7th Amendment.  The decision was issued by a majority of Justices Thomas, Ginsburg, Breyer, Alito, Sotomayor and Kagan.  Justices Breyer, Ginsburg and Sotomayor also issued a concurring opinion, while Justices Roberts and Gorsuch dissented. Continue reading this entry

Recent PTAB Studies: Expanded Panels and Orange Book-Listed Patents

In connection with a recent “Chat with the Chief” webinar, the Patent Trials and Appeal Board (“PTAB”) released two studies – a study of expanded panels and a study of proceedings challenging orange book-listed patents.[1]  Practitioners may find value in reviewing these studies and the conclusions drawn by the PTAB.  Continue reading this entry

Board Rules that Tribal Immunity is Unavailable to Avoid Inter Partes Review Challenge

On Feb. 23, 2018, the Patent Trial and Appeal Board (“Board”) ruled an assertion of Tribal sovereign immunity would not avoid challenges to certain patents that had been assigned to the Saint Regis Mohawk Tribe (“the Tribe”). See Mylan Pharm., Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127, Paper No. 130 (February 23, 2018).  In our earlier post entitled “Pharma Patents Assigned to Indian Tribe to Thwart Inter Partes Review” we reported that certain Orange Book-listed patents had been assigned to the Tribe, which licensed the patents back to the original assignee, in an effort to obtain dismissal of the pending inter partes reviews (“IPRs”) against those patents.  Continue reading this entry

Successful Appeals of PTAB Decisions: In re Hodges

Obtaining a remand on an appeal from the Patent Trial & Appeal Board (PTAB) is of course a win for the Patent Owner, but may result in an ultimate loss when the case is revisited at the PTAB. The Feb. 12, 2018 Federal Circuit opinion, In Re Hodges, No. 2017-1434, (Fed. Cir. Feb. 12, 2018), highlights the importance of anticipating appellate review when developing the IPR record and choosing response strategies during patent prosecution to put the Patent Owner in the best position possible for a full reversal of the PTAB’s decision rather than a remand. Continue reading this entry

Collateral Estoppel at the Federal Circuit for Inter Partes Review Proceedings

 

In Maxlinear, Inc. v. CF CRESPE, LLC, slip op. 2017-1039, the Federal Circuit remanded to the Patent Trial and Appeal Board (“Board”) an inter partes review (“IPR”) proceeding to evaluate the patentability of certain dependent claims, where the unpatentability of their respective independent claims had been previously affirmed by the Federal Circuit.  The fact pattern leading to this result is particularly informative.

The IPR that was the subject of the Maxlinear appeal is IPR2017-00592 (“the ‘592 IPR”), in which the Board upheld patentability of claims 1-4, 6-9, and 16-21 of U.S. Patent No. 7,075,585 (“the ‘585 patent”). Id. at 2.  Appellant Maxlinear, Inc. (“Maxlinear”) only sought review of the Board’s decision as to dependent claims 4, 6-9, and 20-21. Id.   Continue reading this entry

PTAB -A Year In Review of 2017

2017 was a year for the record books at the Patent Trials and Appeal Board (PTAB), which has included newly created standard operating procedures from the PTAB, a landmark en banc ruling from the Court of Appeals for the Federal Circuit impacting amendment practice, and a series of informative decisions from PTAB impacting multiple proceedings against the same patent. Continue reading this entry

Federal Circuit: Effect of Disclaimer Prior to Trial Institution

In Arthrex, Inc. v. Smith & Nephew, Inc., et al., slip op. 2017-1239, the Federal Circuit affirmed the Board’s decision to enter an adverse judgment following Patent Owner’s disclaimer of all claims challenged in an inter partes review petition before the institution of trial.  At the time of entering the adverse judgment, an estoppel effect attached which precluded Patent Owner from “taking action inconsistent with the adverse judgment, including obtaining in any patent … [a] claim that is not patentably distinct from a finally refused or canceled claim.” Id. at 3 (citing 37 C.F.R. § 42.73(d)(3)(i)).[1] Continue reading this entry

Expanded PTAB Panel Finds Sovereign Immunity Waived By Patent Enforcement

In a case of first impression, an expanded PTAB panel (including Chief APJ Ruschke) found that a parallel enforcement action by a patent owner waives its sovereign immunity defense against under the 11th Amendment an AIA petition in Ericsson v. Regents of the University of Minnesota.  The expanded panel first affirmed its earlier decisions finding that sovereign immunity will prevent an IPR from proceeding against a patent owner who has not waived the defense. In this particular case, however, the patent owner “waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.” Continue reading this entry