Posts Tagged: "IPR"

It is clear that the current regulations are almost exclusively focused § 316(b)’s “the ability of the Office to timely complete proceedings” and not the other language of § 316(b): “the effect of any such regulation on the economy”, “the efficient administration of the Office” or “the integrity of the patent system.” Changes can be made to improve the IPR process without throwing the baby out with the bath water. Invalid patents can still be addressed at the USPTO while returning some of the lost integrity of the patent system… The patent owner should be allowed to petition the Director for a reconsideration of Institution…

The timing of the announcement is curious given that Michelle Lee’s days seem numbered as Director of the Office. As first reported on IPWatchdog.com, Commerce Secretary Wilbur Ross has interviewed at least three candidates for the position of Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Those receiving interviews were Phil Johnson, former Vice-President for Intellectual Property Strategy & Policy for Johnson & Johnson, Randall Rader, former Chief Judge of the United States court of Appeals for the Federal Circuit, and an unidentified patent attorney characterized by one source as a dark horse candidate.

On January 3, 2017 the Court of Appeals for the Federal Circuit (the court) handed down two decisions relating to obviousness under § 103 – In re: Marcel Van Os, Freddy Allen Anzures, Scott Forstall, Greg Christie, Imran Chaudhri, No. 2015-1975 (Fed. Cir. 2017) (Van Os) and In re: Ethicon, Inc., No. 2015-1696 (Fed. Cir. 2017) (Ethicon). In Van Os, the Appellants appealed a decision from the Patent Trial and Appeal Board (PTAB) affirming the Examiner’s rejection of the claims of U.S. Patent Application No. 12/364,470 under § 103. The court addressed the question of whether the PTAB properly held that the claims were obvious in light of prior art. The court vacated and remanded. In Ethicon, the Appellant appealed a decision from the PTAB affirming, in a merged inter partes reexamination, the Examiner’s rejection of the claims of U.S. patent 7,591,844 (the ’844 patent) under § 103. The court addressed the question of whether the PTAB properly affirmed the rejection of the claims of the ’844 patent under § 103. The court affirmed. These two cases raise several interesting questions, especially given that they were decided on the same day.

If you are having trouble figuring out how Zond could have had 371 claims, lost all of them, but only 1,220 claims were instituted out of 1,377 claims challenged, you understand the problem. These are not misprints or mistakes. Zond had 371 unique patent claims, but because of the IPR gang tackling phenomena those 371 claims were challenged a total of 1,377 times, but instituted only 1,220 times. Thus, the number of institutions is more than three times the number of unique claims Zond owned. In other words, the institution rate shouldn’t have been 88.6%, it should have been closer to 329%!

Russ Slifer: “And as you know by statute the Director is tasked with making the institution decision on an IPR but that’s been delegated to the PTAB for obvious logistical reasons. There’s no way that the front office could read through all petitions and make a decision itself so it had to be delegated to the Board. But sometimes there are cases that probably should be reconsidered on whether institutions should have be made – and maybe it’s because the art that is relied on is the same or substantially the same as what was in prosecution. Or maybe there is a financial hardship of the patent owner or the IPR will not resolve all of the outstanding validity issues that are pending in a district court. So there could be certain categories of reasons that you could basically an interlocutory appeal to the Director for reconsideration. I think that is one way to help address some of the potential abuses or hardships on the patent owner if there’s been several IPRs that have been instituted against a patent from different parties. Right now the system does not allow for reconsideration once a decision has been made. That’s just one example.”

Patent claims being adjudicated valid in federal district court and then being killed in an administrative proceeding at the PTAB is exactly the problem so many of us saw coming. Time and time again throughout the debates in Congress, and all through the legislative history, post grant proceedings were explained as being a faster, low-cost alternative to litigating validity disputes in Federal District Court. That was just a lie. Post grant proceedings at the PTAB are not cheap, and they are not an alternative to district court proceedings. The PTAB is duplicative and anti-patent. In fact, because of the different standards used between district courts and the PTAB, and because district courts presume patents are valid pursuant to 35 U.S.C. 282, different outcomes are practically inevitable.

Michael Meiresonne (“Meiresonne”) appealed from the final inter partes review (“IPR”) decision of the U.S. Patent Trial and Appeal Board (“Board”). The Board held that certain claims of the underlying patent were unpatentable as obvious… The Court stated that neither prior art reference said or implied that combining their teachings, especially for the “rollover viewing area” would be “‘unreliable,’ ‘misleading,’ ‘wrong,’ or ‘inaccurate,’ and which might lead one of ordinary skill in the art to discard” the combination. Thus, the references did not discourage a person of ordinary skill in the art from making the combination.

The PTAB held that anticipation can be found even when a prior art reference does not disclose each and every claim element as long as one of skill in the relevant art would “at once envisage” the claimed arrangement, citing Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381 (Fed. Cir. 2015). The Federal Circuit explained the PTAB fundamentally misinterpreted and misapplied the Court’s holding in Kennametal… For there to be anticipation each and every element must be present, period. Close is not the same and PTAB judges should know that.

While there are many fixes that need to happen to bring about even a modicum of fairness and justice to the PTAB processes, the most important fix that must occur is a change to the law that recognizes a quieting of title for patents. Serial challenges against the same patent must end, period… If a party challenges a patent in a post grant proceeding notice should be provided to the industry, such as through the Patent Office Gazette and/or other mechanisms, providing any and all interested parties the ability to similarly file a challenge against the same patent with a certain number of days – perhaps 90 days or maybe 120 days. Then once the time period for challenges has run the PTAB can determine which claims to institute, if any, and the case can proceed.

Each of the Covidien IPRs challenged the validity of a single patent owned by the University of Florida Research Foundation (UFRF) which the university had previously asserted against Covidien. The decisions made by the ALJs in these IPRs indicate that public research universities can find protection from review proceedings at PTAB by claiming rights afforded them by the Eleventh Amendment of the U.S. Constitution… In their final written decision, the PTAB ALJs note that deciding this case based on UFRF’s Eleventh Amendment defense could have wide-reaching implications for the future of validity challenges to patents held by public university research arms or “a monetization foundation affiliated with a state university.”

A panel of administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB) issued a final written decision ending a series of inter partes review (IPR) proceedings targeting patents covering a popular multiple sclerosis (MS) treatment developed and sold by Ardsley, NY-based Acorda Therapeutics (NASDAQ:ACOR). The decision strengthens the patent portfolio covering Acorda’s Ampyra pharmaceutical even as competition from generic manufacturers has ramped up in recent months. The IPRs, instituted after petitions from the Kyle Bass-backed Coalition for Affordable Drugs (ADORCA), targeted four patents listed in the U.S. Food and Drug Administration’s (FDA) Orange Book.

LAB sued Eli Lilly & Company, alleging marketing of the drug Cialis induced infringement of LAB’s patent. Eli Lilly subsequently requested that the Board conduct inter partes review of the patent. The Board agreed to do so and ultimately found the patent to be obvious in light of three prior art references… The Court then found the Board’s construction of certain claim terms to be overly broad, stating the Board’s construction “would make the patent claims applicable to individuals with erectile dysfunction not caused by penile fibrosis.”

In the recent case of Intellectual Ventures v. Toshiba, Judge Robinson noted that “the Federal Circuit has construed the language quite literally” in the use of the word “during.” The term is spelled out as “any ground that the petitioner raised or reasonable could have raised during that inter partes review” in § 315(e)(1). The judge noted that while extending the logic of non-instituted grounds as not being able to be raised “during” an IPR proceeding to prior art references that were never presented to the Patent Trial and Appeal Board at all “confounds the very nature of this parallel administrative proceeding, the court cannot divine a way around the Federal Circuit’s interpretation in Shaw.” Thus, she did not estop Toshiba from presenting the grounds never presented to the PTAB in a pair of orders in December and January, and heavily implied that the Federal Circuit should weigh in to clarify the issue.

The first and perhaps most obvious news story here relates to the fact that the United States Supreme Court believes that Michelle Lee remains Director of the USPTO… This dispute is between the parties to an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB). There are three questions presented by Oil States in the petition for writ of certiorari… Despite these very important questions, the Federal circuit affirmed the Patent Trial and Appeal Board (PTAB) without opinion with a Rule 36 judgment, which is simply a one-word judgment that says “Affirmed” without any explanation.

Wi-Fi One stands among the latest—and potentially the most important—in a series of cases that have called into question both the degree to which Congress intended to restrict the authority of federal courts to review certain decisions made by the Patent Trial and Appeal Board (PTAB) and the limits on Congress’s power to actually do so. While it remains to be seen how the en banc Federal Circuit will ultimately rule, the answer to its question will inevitably have a broad and deep impact on future inter partes review and other post-grant proceedings, Patent Office procedures, and beyond.