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]
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On February 20, 2019, the PTAB held that the statutory grace period for PTO papers and fees due on a weekend or federal holiday applies to the one-year deadline for filing IPR petitions under 35 U.S.C. § 315(b). Under longstanding PTO practice, the Office has accepted filings after a formal deadline if that deadline fell on a weekend or federal holiday and the filing is completed on the next
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IPR petitioners Proppant Express Investments, LLC and Proppant Express Solutions, LLC (collectively, “PropX”) have a pending instituted inter partes review (IPR) on certain claims of U.S. Patent No. 9,511,929 (“the ’929 patent”).  Unfortunately for PropX, it mistakenly grouped its arguments against one of the dependent claims—claim 4—into the wrong ground, which led the Patent Trial and Appeal Board (the “Board”) to deny institution of IPR of that claim, due to inadequate support.  IPR2017-02103, Paper 19 at 32, 34.  After institution, PropX sought to amend the petition to move claim 4 into the proper ground.  The Board denied PropX’s request because PropX was not diligent: despite Patent Owner’s (“Oren”) Preliminary Response pointing out PropX’s mistake, PropX failed to notice the mistake until after institution.  IPR2017-02103, Paper 22.

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Two recent decisions from the PTAB and Federal Circuit signal inter partes review (“IPR”) petitioners to be cautious of approaching too closely the one-year time bar set forth in 35 U.S.C. § 315(b). First, on August 14, 2018, the PTAB denied institution of a petition that had been filed more than one year after a related district court complaint had been mailed, but within a year from its receipt. Vizio, Inc. v. ATI Techs. ULC, IPR2018-00560, Paper 7 (PTAB Aug. 14, 2018). Then, on August 16, 2018, the Federal Circuit held that a complaint could trigger the one-year time bar even if that complaint had been dismissed without prejudice. Click-to-Call Techs., LP v. Ingenio, Inc., No. 15–1242, 2018 WL 3893119, at *4 (Fed. Cir. Aug. 16, 2018). These decisions reiterate the need for IPR petitioners served with a complaint to approach the one-year bar cautiously when deciding target IPR filing dates.
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On August 13, 2018, the PTO published a public notice announcing the first update to the Office Patent Trial Practice Guide since its original introduction in August 2012. The update adds or substantially revises several procedural guidelines for trial proceedings—most notably, the Board will now permit sur-replies under the standard scheduling order in most cases. The update also addresses the role of expert testimony, motions to exclude and motions to strike, live testimony at oral hearing, and factors affecting the Board’s discretion to decline institution.

The August 2018 update to the Trial Practice Guide is available here, and the original 2012 Trial Practice Guide remains available here.

Details on key provisions in the Trial Practice Guide update are provided below.
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Drug product labels (also known as prescribing information) are often asserted as prior art by patent challengers, both in front of the PTAB and in district court ANDA litigation.  Before the PTAB, using such prior art requires showing that it qualifies as a “printed publication” under 35 U.S.C. §§ 102 and 311(b).  Recently, the PTAB appears to be applying greater scrutiny to the use of such prior art when cited in invalidity grounds.  The Board’s analysis in such situations “involves a case-by-case inquiry into the facts and circumstances surrounding the reference’s disclosure to members of the public.”  Sandoz Inc. v. AbbVie Biotechnology Ltd., IPR2018-00156, Paper 11 at *9 (June 5, 2018) (citing In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004)).  A pair of recent rulings identify some of the evidentiary issues catching the eyes of PTAB panels as they consider invalidity arguments that rely on product-label prior art.

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SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), established a clear rule requiring institution on all challenged claims in future IPR proceedings. But the Supreme Court’s April 24 decision created immediate uncertainty regarding the hundreds of IPRs in which the PTAB had already instituted review or issued a final written decision on fewer than all claims and all grounds presented in the petition. The Federal Circuit’s immediately apparent interest in SAS transitional issues has led to swift action—the court’s precedential decision in PGS Geophysical AS v. Iancu explains that (1) SAS requires institution on all claims and all grounds presented in a petition for IPR, (2) the Federal Circuit can exercise appellate jurisdiction in pre-SAS cases where the Board granted only partial institution, and (3) parties can waive requests for SAS-based relief on appeal.
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The Supreme Court’s recent decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), has bred considerable uncertainty about what to do with the multitude of pending inter partes review (IPR) cases that were instituted under pre-SAS standards. The adjudicators tasked with applying SAS in those cases—at the PTAB and the Federal Circuit—are now sorting through the fallout.

The PTAB reacted quickly by releasing guidance two days after SAS that outlined the agency’s initial response: (1) future institution decisions will be decided on an all-or-nothing basis as to all claims and all grounds in the petition, (2) panels presiding over pending trials that were instituted on fewer than all claims and grounds in the petition are issuing orders to supplement the institution decision and institute on all claims and grounds, and (3) panels may take further actions in individual pending cases, such as allowing supplemental briefing or extending trial deadlines, depending on factors such as the particulars of the case, the stage of proceedings, and input from the parties. The PTAB noted that it will continue to assess its response to SAS and may issue additional guidance in the future.

The Federal Circuit is likewise wrestling with SAS.
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