It has become a significant open question in inter partes review proceedings what a petitioner must do to establish a reference as a printed publication. In a decision designated Precedential on December 20, 2019 (Hulu, LLC v. Sound View Innovations, LLC, IPR2018-1039) the Patent Trial and Appeal Board (“the Board”) provided practitioners with guidance regarding “what is required for a petition to establish that an asserted reference qualifies as a ‘printed publication’ at the institution stage.” Paper 29 at 6. The decision held, inter alia, that at the institution stage the “reasonable likelihood” standard applies to printed publications, and that the inquiry, as during other stages of the proceedings, is based on the totality of the evidence. Id. at 14-17. Continue Reading PTAB states the “reasonable likelihood” standard applies to demonstrating public accessibility at the institution stage

As we noted previously on the blog (see here, here, here, and here), issues proving up prior art during inter partes review proceedings arise regularly at the PTAB.

Our colleagues, Miguel Bombach and Brandon White, reviewed the current state of PTAB rulings, and synthesized their findings in a short research paper, now available, entitled Inter Partes Review Practice: Challenges in Proving Up Publications as Prior Art. [PDF] Continue Reading Challenges in Proving Up Publications as Prior Art During IPR

Today, the US Patent and Trademark Office issued a new, consolidated edition of its AIA Trial Practice Guide (November 2019), as announced on the PTO’s website.

As noted in the PTO’s announcement of the new Guide, “[t]he topics of revisions and updates included in this consolidated version include”:

  • Institution of trial after SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018)
  • Use of sur-replies in lieu of observations
  • How parties may contact the Board to request an initial conference call
  • Use of word counts
  • The sample scheduling order for derivation proceedings
  • The default protective order

The complete set of Trial Practice Guides is linked here:

On August 20, 2019, a panel at the PTAB issued a Final Written Decision in Hunting Titan, Inc., v. DynaEnergetics GmbH & Co. KG that denied DynaEnergetics’s contingent motion to amend claims under the Motion to Amend PracticeIPR2018-00600, Paper 42 at 29.  The Panel explained that Hunting Titan met its burden to show that DynaEnergetics’s proposed amended claims did not overcome the anticipatory nature of the prior art’s disclosure.  Id.  In a Request for Rehearing of this decision, however, DynaEnergetics argued that, in concluding the amended claims were unpatentable, the Board relied upon a theory of unpatentability not proposed or presented by Hunting Titan to challenge the proposed substitute claims.  IPR2018-00600, Paper 44 at 7-10; see also id. at 8-9 (arguing that “[b]ecause DynaEnergetics [] demonstrated that the evidence could not support a finding of obviousness of the proposed amended claims, the Board sua sponte found the claims unpatentable as anticipated, even though [Hunting Titan] never asserted this argument.”).

In a recent order, the PTAB’s Precedential Opinion Panel granted DynaEnergetics’s request, filed with its request for rehearing, that the POP review the Board’s decision denying the Motion to Amend.  IPR2018-00600, Paper 46 at 2.  The Panel will address the following issues:

  1. Under what circumstances and at what time during an inter partes review may the Board raise a ground of unpatentability that a petitioner did not advance or insufficiently developed against substitute claims proposed in a motion to amend?
  2. If the Board raises such a ground of unpatentability, whether the Board must provide the parties notice and an opportunity to respond to the ground of unpatentability before the Board makes a final determination.

IPR2018-00600, Paper 46 at 2.  The parties and any amicus curiae may submit briefs discussing the two issues above, of no more than 15 pages, no later than December 20, 2019.  Id.  The parties may then file response briefs, of no more than 10 pages, no later than January 6, 2020.  Id. at 3.  Amicus curiae must submit their briefs to trials@uspto.gov.

Last week, we wrote about Arthrex, Inc. v. Smith & Nephew, Inc. and described recent developments that suggested the Federal Circuit was leaning toward holding that all current PTAB judges had been unconstitutionally appointed in violation of the Appointments Clause of Article II. The Federal Circuit has now done just that Continue Reading Federal Circuit Holds that PTAB Judges Were Unconstitutionally Appointed

An order from the Federal Circuit on October 15 suggests the court may be close to holding that the PTAB has been operating in violation of the Appointments Clause, which could significantly disrupt PTO operations.  The case presents important questions: whether the PTAB’s judges have been lawfully appointed, and if not, what happens to decisions that have been issued by panels of those judges? Continue Reading Constitutional Challenge under the Appointments Clause May Upend PTAB Proceedings

Today, the PTAB’s Precedential Opinion Panel issued a precedential decision holding that even a deficient pleading triggers the one-year IPR filing period.  GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (PTAB Aug. 23, 2019) (Paper 38)Continue Reading PTAB Issues Precedential GoPro Decision That Even Service Of “Deficient” Complaint Starts IPR Time Clock

On July 30, the Federal Circuit issued a decision in Celgene Corporation v. Peter (Nos. 2018-1167, -1168, -1169, and -1171), where the patent owner argued that the PTAB’s authority to cancel claims through IPR amounted to an unconstitutional taking as applied to pre-AIA patents. Numerous patent owners have raised similar challenges since the Supreme Court expressly reserved judgment on the issue in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365, 1379 (2018). The Federal Circuit’s decision puts that issue to rest (at least for now) and confirms that all issued patents remain subject to IPR.

Background

The Celgene appeal arose Continue Reading Federal Circuit Rejects Latest Constitutional Challenge to Inter Partes Review

Previously, Emily Greb posted on the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, Dir. U.S. Pat. & Trademark Off., 138 S. Ct. 1348 (2018), which held that when the Board institutes an inter partes review, it must decide the patentability of all claims challenged in the IPR.

Now, Emily and Tyler Bowen, with assistance from Gene W. Lee, Bryan D. Beel, and Maria A. Stubbings, have published a short research paper entitled The Supreme Court’s SAS Decision: Has All-Or-Nothing Institution Created A Wave Of Change? [PDF] Continue Reading The Effect Of SAS Institute v. Iancu On IPR Practice

On June 10, 2019, the Supreme Court held that a federal agency is not a “person” who can file a petition for review of a patent under one of the three new proceedings created by the America Invents Act (“AIA”).  Return Mail, Inc. v. United States Postal Service, 587 U.S. ____, 2019 WL 2412904, at *3 (U.S. June 10, 2019) (“Return Mail“).  Specifically, the Court held that federal agencies cannot file a petition for inter partes, post-grant, or covered business method review with the Patent Trial and Appeal Board (“PTAB”) (collectively, “PTAB proceedings”).  Id. Continue Reading Supreme Court Prevents the Government from Challenging Patents in PTAB Proceedings