In a decision denying institution of inter partes review rendered on February 5, 2020 , the Patent Trial and Appeal Board (“Board”) stated “there is no general rule that efficacy language in a claim is non-limiting.” Gilead Sciences, Inc. v. United States, IPR2019-01455, Paper 16 at 26. The decision held, inter alia, that whether efficacy language in a claim should be given patentable weight is a fact-based inquiry that includes examining the application as whole and the patent record. Id. at 26, 30. When the claims at issue have been granted in a patent that issued from a continuation application, the patent record includes that of the parent patent (e.g., and, if applicable, any grandparent) or parent patent application.
Building on one of the running topics on our blog—what a Petitioner must do to demonstrate public accessibility of a printed publication (see, for example, posts from Dec. 27, 2019; Dec. 2, 2019; Nov. 13, 2018; and Sept. 25, 2018)—the Patent Trial and Appeal Board (“PTAB”) has once again addressed the issue and held that bare attorney argument cannot overcome objective evidence of a reference’s accessibility. A summary of the institution decision in this case was published on our blog on March 5, 2019. Continue Reading The Continued Prior Art Accessibility Saga: Beware of “Bare Attorney Argument”
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
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
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 Practice. IPR2018-00600, 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:
- 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?
- 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 email@example.com.
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.
The Celgene appeal arose Continue Reading Federal Circuit Rejects Latest Constitutional Challenge to Inter Partes Review