Posts Tagged: "inter partes"

Since its inception, the Patent Trial and Appeal Board (PTAB) has been a frequent venue for patent challenges in the pharmaceutical and biotechnology industries. By the end of the U.S. Patent and Trademark Office’s (USPTO’s) 2018 fiscal year, patents in those fields were targeted in nearly 10% of all petitions for inter partes review (IPR), totaling approximately 900 individual petitions. Of these 900 petitions, roughly 5% challenged patents listed in the FDA’s Orange Book for approved drug products. The remaining petitions challenged biologic drugs (1.3%) and other biologic-, biotechnology-, or pharmaceutical-related patents (3.5%). Many of these petitions have ultimately resulted in the cancellation of all challenged claims, including those of a significant number of Orange Book patents. Based on the PTAB’s initial high rate of claim cancellation in pharma and other areas, critics of the PTAB were quick to deem it a patent “death squad.” Does the PTAB still deserve the “death squad” label when it comes to Orange Book patents? In this article, we examine the rates of challenge, institution, and final written decision outcomes for patents listed in the Orange Book, from the PTAB’s inception through the end of its 2018 fiscal year.

In AC Techs., S.A. v. Amazon.com, Inc. the Federal Circuit found the PTAB did not exceed its statutory authority by addressing a non-instituted ground on reconsideration; in fact, it would have violated the statutory scheme for the PTAB not to consider the previously non-instituted ground… The claims at issue related to data access and management, namely, storing copies of data across a network to improve data integrity and reduce network lag. Amazon and Blizzard challenged the ’680 patent based on a single prior art reference. They presented three grounds in their petition, all centered on the construction of the term “computer unit.”

On January 11, GKN Automotive LTD. filed a brief in opposition to a petition for writ of certiorari filed by JTEKT Corporation. The question JTEKT seeks to have the Supreme Court consider is whether any inter partes review (IPR) petitioner, even a petitioner without standing, may appeal a final written decision of the Patent Trial and Appeal Board (PTAB) to the Court of Appeals for the Federal Circuit. The standing requirement for litigants in order to gain entry to a federal court is well-established, black-letter law taught to every law student across the country. It is hardly shocking that the Federal Circuit would apply well-established Constitutional safeguards and procedural law to prevent those without appropriate grievances from entry into the federal appellate system. In this case, JTEKT simply did not have any injury, real or imagined.

On January 11th, Askeladden LLC (Askeladden) filed an amicus brief in support of the Supreme Court accepting certiorari from JTEKT Corp. v. GKN Automotive Ltd., No. 2017-1828 (Fed. Cir. 2018). This case raises the important question of whether the U.S. Court of Appeals for the Federal Circuit can refuse to hear an appeal by a non-defendant petitioner from an adverse final written decision in an inter partes review (IPR) proceeding on the basis of a lack of a patent-inflicted injury-in-fact, even though Congress has statutorily created the right for “dissatisfied” parties to appeal to the Federal Circuit. 35 U.S.C. § 319.

Ultimately, the panel held that JTEKT failed to establish an actual injury sufficient to confer Article III standing because “the[] declarations [did] not establish that [JTEKT’s] planned product would create a substantial risk of infringing [the] patent or likely lead to charges of infringement[.]” Id. Further, the panel did not agree with JTEKT’s argument that the “creation of estoppel based on [JTEKT’s] participation in the IPR constitute[d] a separate, and independent, injury[.]” Id. Therefore, the appeal was dismissed.

According to the brief: “The issue raised is whether meeting the statutory requirements of Section 319 of Title 35 of the United States Code is an intangible injury-in-fact that is enough to meet the “case or controversy” requirements of Article III of the U.S. Constitution.”

Congress created Inter Partes Review (IPR) to weed out clearly invalid patents that would not have been issued had the United States Patent and Trademark Office (USPTO) known about certain prior art. However, USPTO Director Iancu should consider limiting his delegated authority in 35 U.S.C. § 325(d) to prior art that was not presented to the USPTO during examination. As such, all references in the prosecution record would be presumed to have been fully considered by the examiner and could not form any part of a post grant petition. This change would exercise the discretion provided by Congress to its fullest, preserve USPTO resources by not reconsidering the Office’s prior decisions, and restore some predictability to the U.S. patent system.

Who stands to gain if Google prevails? Well, Google certainly, but so too does Alphabet, which is precisely why Alphabet is a real party-in-interest under any fair and rational interpretation of the law. In Q3 2018, Google revenue amounted to $33.6 billion. In Q3 2018, Alphabet revenue amounted to $33.74 billion. That means that 99.59% of Alphabet’s Q3 2018 revenue came from Google. Alphabet is Google, Google is Alphabet. It is time for Director Iancu and the Precedential Opinion Panel to step up to the plate and put the PTAB genie back in the bottle. Declaring what is the real, sensible and correct legal meaning for who is a real party-in-interest should be a layup, and needs to happen soon.

The Federal Circuit recently issued an opinion affirming the decision of the Patent Trial and Appeal Board (“Board”) invalidating a VirnetX patent challenged by Apple. The Court held that VirnetX was collaterally estopped from relitigating whether a prior art reference was a printed publication. The Court further declined to address VirnetX’s argument that inter partes review (“IPR”) procedures could not be retroactively applied to patents filed before enactment of the America Invents Act (“AIA”) because VirnetX failed to preserve that issue for appeal.

On Tuesday, November 20th, the Court of Appeals for the Federal Circuit issued a nonprecedential decision in Google LLC v. Conversant Wireless Licensing, which vacated a decision by the Patent Trial and Appeal Board (PTAB) to uphold the validity of patent claims owned by Conversant after conducting an inter partes review (IPR) proceeding petitioned by Google and LG Electronics… It is hard to reconcile decisions where the Federal Circuit bends over backwards to give more process and procedural rights to petitioners when for so long patent owners have been railroaded at the PTAB and then had those summary execution proceedings rubber stamped by the Federal Circuit. If increased scrutiny on the PTAB is a two-way street I welcome it.

Despite potentially relevant Supreme Court precedent in Thomas and Granfinanciera, the better view under the weight of Supreme Court precedent with respect to patent validity, absent the recent decision by the Court in Oil States, is that determination of the validity of issued patents does not include the government as a party and, therefore, only private rights are involved.  Jurisdiction should, therefore, be solely within Article III, and preclude final determinations of patent validity as they currently exist under the AIA, as well as other post-issuance adjudication, such as interference proceedings and ex parte reexamination.  Statutory provisions for post-grant examination at the Patent Office should be limited to an advisory capacity as an adjunct to a federal district court and address only issues of fact.  Such factual determinations coming from the Patent Office should be subject to review for substantial evidence by a district court in order to pass constitutional muster under Article III. However, given that issued patents are deemed to be “public rights” and that IPRs have been upheld as constitutionally valid under Oil States, there may be no limit to the power Congress can grant to the Patent Office over the validity of patents, potentially usurping any role for the judiciary in this regard under Article III.

Acceleration Bay appealed the final written decisions of the Board holding claims 1-9 of U.S. Patent No. 6,829,634, claims 1-11 and 16-19 of U.S. Patent No. 6,701,344, and claims 1-11 and 16-17 of U.S. Patent No. 6,714,966 all unpatentable. Petitioners Activision Blizzard, Inc., Electronic Arts Inc., Take-Two Interactive Software, Inc., 2k Sports, Inc., and Rockstar Games, Inc. (collectively, “Blizzard”) also cross-appealed portions of the Board’s decisions holding patentable claims 10-18 of the `634 patent, as well as substitute claims 19 of the `966 patent, 21 of the `344 patent, and 25 of the `634 patent. Blizzard also cross appealed the Board’s decisions holding that one particular reference — the Lin article — was not a printed publication under 35 U.S.C. § 102(a). In an opinion authored by Judge Moore and joined by Chief Judge Prost and Judge Reyna, the Federal Circuit affirmed the PTAB decision, finding that both Acceleration Bay’s and Blizzard’s arguments were without merit.

Why is it that innovators such as Universities and independent inventors are caricatured as patent trolls while entities such as Unified Patents and RPX, who exist for the sole purpose of destroying property, are somehow let off the hook or even celebrated? In a different era, about 100 years ago, those large corporations and their allies who ganged up on smaller companies and individuals were characterized as ‘robber barons’ and caricatured as ‘fat cats’… The AIA makes clear that patent owners should not have to endure repeated attacks on their patent claims at the PTAB.

Inventor advocacy group US Inventor recently filed an amicus brief with the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari in Capella Photonics v. Cisco Systems. This case, if taken up on appeal, will require the Supreme Court to answer whether the Court of Appeals for the Federal Circuit operates in violation of 35 U.S.C. § 144, the statute governing how the Federal Circuit must respond to appeals of decisions from the U.S. Patent and Trademark Office. In other words, can the Federal Circuit use Rule 36 to issue an affirmance without opinion of decisions appealed from the Patent Trial and Appeal Board (PTAB).

The Multiple Proceedings rule has become the essence of uncertainty. What exactly does it mean? §325(d) gives the PTO Director the authority to refuse a petition when “the same or substantially the same prior art or arguments” were previously presented. For IPRs like this one to proceed despite numerous prior rulings in various fora upholding a patent’s validity is a travesty. The facts of this case underscore the mischief that can befall a patent owner under the current practice of the PTAB, enabled by the Federal Circuit… I recently wrote, “[t]he fight goes on to invalidate claims until the patent owner loses and the claims are invalidated.” But that is precisely what the § 325(d) Multiple-Proceedings rule was intended to prevent. And this needs to stop.

In Bennett Regulator Guards, Inc. v. Atlanta Gas Light Co. the Federal Circuit ruled the time-bar for filing a petition for inter partes review in Section 315(b) begins to run as soon as a complaint for infringement is served in district court, regardless of whether the complaint is involuntarily or voluntarily dismissed or is ultimately successful on the merits. There are no exceptions to the statutory time limit for filing a petition for inter partes review in 35 U.S.C. § 315(b).