Estoppel Prevents Second IPR Petition Even When New References Were Missed By First Search

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In a case that appears to be a case of first impression, the PTAB found in its decision denying institution in IPR2016-00781 that a final written decision in an earlier IPR created estoppel under 35 U.S.C. § 315(e)(1), preventing a second IPR petition from being instituted that used additional references which reasonably could have been raised before, even though the Petitioner explained how the new references were missed by the first search.  In addition, the PTAB further denied institution using its discretion under 35 U.S.C. § 325(d) because the unpatentability grounds were essentially the same as in the earlier petition, although additional references were included. Continue reading this entry

En Banc Federal Circuit To Review Standards for Amending Claims During AIA Proceedings

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In a rare grant of a petition for rehearing en banc, the court decided that an appeal “warrants en banc consideration” of who bears what burden when amending in an IPR.  In re: Aqua Products, No. 15-1177, slip op. at 2 (Fed. Cir. August 12, 2016).  From the very beginning of IPRs, the Patent Trial and Appeal Board has required the patent owner to bear the burden on a motion to amend.  Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB June 11, 2013).  That is, when a patent owner during an IPR filed a motion to amend its claims, the Board required the patent owner to prove the patentability of its amended claims.  Id.  That requirement might soon change.  Continue reading this entry

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

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Yesterday, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner based upon the Board’s institution decision.  In particular, the CAFC found that Cuozzo’s prohibition of appealing institution decisions does not prevent patent owners from appealing a final written decision based on a failure to establish prima facie obviosuness, even though the final written decision rests upon an institution decision that was not challenged in a request for rehearing on such basis. Continue reading this entry

Straight From The Judges’ Mouths: Lessons For Persuading the Board

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The USPTO’s Patent Trial & Appeal Board (PTAB) hosted its June Boardside Chat, which addressed best practices for presenting patentability/unpatentability arguments before the board. The Chat, which was hosted by Administrative Patent Judges (APJs) Jay Moore, Christopher Crumbley, and Kal Deshpande, provided valuable guidance for best-practices in the context of IPR proceedings. Continue reading this entry

PTAB Holds Technical Difficulties Will Not Save Late-Filed IPR Petitions

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The PTAB recently stood firm in denying a petitioner’s motion to change the filing dates of two IPR petitions that missed a statutory deadline by less than ten minutes. Case IPR2016-00281 and IPR2016-00282 (Patents 8,603,514 B2 and 8,017,150 B2). The petitioner, Teva Pharmaceuticals USA, Inc., was facing a 1-year statutory IPR filing deadline of December 3, 2015, set by a complaint alleging patent infringement served on Teva a year earlier. Continue reading this entry

Survey of Pharmaceutical IPRs Filed By Generic Drug Company Petitioners

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We have reviewed a sub-group of 111 IPRs filed by generic drug companies against pharmaceutical patents to assess outcomes and trends.  While our survey was not  intended to capture every IPR filed by a generic drug company,  it does cover the most active generic company filers to date (see Fig. 2 below).  Examining this particular group of IPR petitioners, we found an institution rate of 67%, which is not significantly different from the general rate of institution across all technologies, showing that generic companies are achieving a comparable institution rate.  There is also a very high settlement rate of 23% (combined pre- and post-institution settlements out of total outcomes), with pre-institution settlements counting for 17% of all outcomes (see Fig. 1 below).  While a greater number of these IPRs resulted in a finding of all instituted claims being patentable in final written decisions (FWDs) compared to IPRs across all technologies, the sample size of FWDs is so small (9 IPRs in Fig. 1) that it may be premature to read too much into this.  Continue reading this entry

IPR PROACTIVE DEFENSE MEASURES – STRATEGIES AND CONSIDERATIONS FOR PATENT OWNERS

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Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one. This article explores IPR proactive defense measures that may be useful for patent owners to deploy in advance of facing an IPR. Continue reading this entry

DOJ Files IPR Petitions Against Discovery Patents

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The U.S. Department of Justice (DOJ) filed six petitions for inter partes review (IPR) of three patents assigned to Discovery Patents, LLC. The patents cover security alarm systems and methods for providing secure real-time video and imaging to emergency response agencies over a high speed communication link. The challenged patents are USPs 6,798,344, 6,778,085 and 7,323,980.
The DOJ’s attack on private sector patents is unusual, but not unprecedented.

DOJ Has Used IPR Before In Response To Litigation Asserting Patents Against the US Government

This is the DOJ’s second time filing IPRs – in January 2016, the DOJ petitioned for review of Iris Corp.’s U.S. Patent No. 6,111,506 for passport identification technology (IPR2016-00497). Iris Corp. had previously sued the government in the U.S. Court of Federal Claims for infringement prior to the DOJ’s IPR petition against its patent.

Likewise, Discovery Patents, together with licensee 3rd Eye Surveillance, LLC, filed suit last year in the U.S. Court of Federal Claims, alleging that the U.S. government infringed its patents (Case 1:15-cv-00501-CFL, filed 5-15-2015). Specifically, Discovery Patents and 3rd Eye contended that the U.S. government maintained infringing security systems in airports, government buildings, and national border areas.

The DOJ’s petitions against Discovery Patents (and Iris Corp. earlier in the year) illustrate one of the risks a patent owner faces when asserting its patent — namely, that the accused infringer may react by filing an IPR and potentially invaliding the patent. Here, the patent owner faces the DOJ, which has more than two dozen registered patent practitioners, according to a search of the Patent Office’s records, and which submitted a lengthy declaration from a digital video expert whose standard consulting rate is $500 / hour.

A Prelude to Settlement?

The DOJ is not the first to challenge Discovery Patents. One of the patents was the subject of IPR proceedings which ended last year — Stealth Monitoring, Inc. had petitioned for review of the ‘980 patent, and the parties settled and terminated proceedings prior to institution of the IPR. Here, the DOJ petitions include at least some of the same prior art used by Stealth Monitoring to challenge the claims of the ‘980 patent. Thus, filing the IPRs may provide leverage for a potential settlement.

With these IPR petitions, the DOJ can counter private sector patent owners accusing the government of infringement. The government is sometimes on the other side, though, as the patent owner. For example, the government owned the patent that was the subject of the first-ever motion to amend granted in an IPR, where the Secretary of Agriculture represented the government rather than the DOJ.

Further, other agencies of the US government have previously played a different role in inter partes proceedings — that of an active competitor. For example, the NIH has filed inter partes reexaminations against biotechnology patents in the past (see e.g., Reexam Control No. 95/000,062). The NIH has obtained many life sciences related patents and is actively involved in transferring technology to the private sector.

DOJ Has Been Active In Patent Reform Hearings

In 2002, the DOJ sponsored hearings on competition and innovation (see https://www.ftc.gov/news-events/events-calendar/2002/02/competition-ip-law-policy-knowledge-based-economy-hearings), which led to a number of recommendations taken up in Congress and a first set of patent reforms under the American Inventor’s Protection Act (AIPA), which created inter partes reexams. This was a precursor to the newer inter partes review procedures available since September 16, 2012 under the America Invents Act (AIA) and a further set of patent reforms enacted by Congress.

More than 4,100 IPR petitions have been filed since September 16, 2012. The DOJ has filed just a handful, and these petitions mark its first forays as petitioners in AIA proceedings. (The IPR petition numbers are IPR2016-01035; IPR2016-01037; IPR2016-01038; IPR2016-01039; IPR2016-01040 and IPR2016-01041.)

Reading The Cuozzo Tea Leaves: Best Practices Pending The Supreme Court's Decision

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The Supreme Court of the United States heard oral argument today on claim construction in inter parte review (IPR) proceedings and the reviewability of institution decisions (a copy of the petition for certiorari is reported at “Supreme Court Accepts 1st IPR Appeal: Cuozzo Could Mark Turning Point for Patent Owners”). On the claim construction issue, the Justices seemed to struggle with the tension between IPRs being consistent with validity determinations in district court litigation, or patentability determinations in USPTO proceedings, referencing them several times as “hybrid” proceedings. Given the uncertainty of the outcome on both appealed questions (whether broadest reasonable interpretation will be retained and whether decisions to institute can be appealed), practitioners should take steps in pending proceedings to protect their rights under the different outcomes. Continue reading this entry

Guarding Against Conclusory Statements & Why It Matters Even More Under The New PTAB Rules

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A common deficiency highlighted in recent PTAB decisions denying institution of an IPR petition is that an expert declaration offers only “conclusory” statements in relation to one or more key aspects of the alleged ground of unpatentability. For example, in a decision denying institution in IPR2016-00011, the PTAB commented that “Dr. Harrigan’s opinion in this respect is conclusory and, therefore, unpersuasive. See Verlander v. Garner, 348 F.3d 1335, 1371 (Fed. Cir. 2003) (Board has discretion to accord little weight to broad conclusory statements from expert witness).” Under the existing rules, an expert’s conclusory statement may be fatal to institution as shown in the preceding case. When the new rules go into effect on May 2nd (see “USPTO Releases New Rules For AIA Post-Grant Proceedings”), allowing patent owners for the first time to include expert declarations in their preliminary responses in rebuttal to a petitioner’s expert, the question of whether a statement in an expert declaration is merely “conclusory” or fully supported by evidence will be drawn into sharper relief. Continue reading this entry