On July 22, 2022, the USPTO released a Request for Comments (RFC) seeking public input on Director review, Precedential Opinion Panel (POP) review, and internal circulation and review of Patent Trial and Appeal Board (PTAB) decisions.

As set out in the RFC, “[t]he USPTO has implemented a number of processes that promote the accuracy

On February 28, 2022, the Patent Trial and Appeal Board (“PTAB”) issued a decision on priority in an interference proceeding between the Broad Institute, Inc., Massachusetts Institute of Technology, and President and Fellows of Harvard College (collectively, “Broad”) and the Regents of the University of California, University of Vienna, and Emmanuelle Charpentier (collectively, “CVC”), and held that Broad’s inventors were the first to invent the subject matter of Count 1 of the interference,[1] a CRISPR-Cas9 system with a single guide RNA able to cleave or edit DNA to affect gene expression in a eukaryotic cell. The Regents of the University of California v. The Broad Institute, Inc., Interference No. 106,115, Decision on Priority at 2, 4 (PTAB Feb. 28, 2022).
Continue Reading PTAB Declares that Broad Institute, MIT, and Harvard Inventors Were First to Invent a CRISPR-Cas Gene Editing System to Alter Gene Expression in Eukaryotic Cells

We have previously written about the Patent Trial and Appeal Board’s (“PTAB”) precedential decision in Apple Inc. v. Fintiv, Inc., which set forth six factors the PTAB will consider when assessing whether to discretionarily deny an IPR petition in light of co-pending district court litigation.  Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020).  The PTAB has been applying the Fintiv factors in subsequent IPRs, many of which involve a stayed district court litigation.  The PTAB has now designated as precedential a decision instituting IPR in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020).  In this IPR, although the co-pending district court case was not stayed, Sotera Wireless (“Sotera”) filed a stipulation relinquishing all potentially duplicative arguments.  The PTAB allowed the IPR to proceed, noting that the stipulation avoided duplication and prevented conflicting results, chief components of the Fintiv factors.  More detail on this decision is below.
Continue Reading One More Tool to Avoid Fintiv IPR Denial: File A Stipulation in District Court Relinquishing Potentially Duplicative Arguments

Today, the PTO’s Patent Trial and Appeal Board (PTAB) issued a final rule related to trial proceedings under the America Invents Act.  The final rule goes into effect 30 days after publication in the Federal Register (scheduled for December 9, 2020); it makes changes to institution practice and sur-replies, and eliminates an evidentiary presumption in favor of a petitioner on certain institution-related fact issues.
Continue Reading PTAB Publishes Final Rule on Institution and Presumption in AIA Trials

To guide and inform the public about the Patent Trial and Appeal Board’s practice surrounding post-grant proceedings, the Board periodically designates certain of its decisions as precedential or informative.  As noted by the PTAB:

precedential decision establishes binding authority concerning major policy or procedural issues, or other issues of exceptional importance, including constitutional questions, important issues regarding statutes, rules, and regulations, important issues regarding case law, or issues of broad applicability to the Board. Standard Operating Procedure 2, 2-3, 11.

An informative decision provides Board norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases. Standard Operating Procedure 2, 9.

Relatedly, the Patent Office uses a Precedential Opinion Panel “to decide issues of exceptional importance to the Patent Trial and Appeal Board (e.g., issues involving agency policy or procedure).”  That Panel is composed of the Director of the Patent Office, the Commissioner for Patents, and the Chief Judge of the PTAB.

Recently, the U.S. Patent and Trademark Office announced that it established two online portals, to facilitate submitting 1) requests to designate precedential and informative decisions, and 2) amicus positions regarding requests for Panel review.
Continue Reading PTAB Adds Online Public-Submission Forms

Since the start of post-grant proceedings, the Patent Office has published a Patent Trial Practice Guide to provide a framework for conducting those proceedings, including setting out the structure and times for taking action in each of the new proceedings (e.g., Inter Partes Review and Post Grant Review). The first Trial Practice Guide issued in August 2012, and updates were issued in August 2018, July 2019, and November 2019 (Consolidated Trial Practice Guide).  To guide post-grant practice, the Patent Office has also designated more than 40 decisions as precedential or informative. A topic of continued interest is the Patent Office’s practice surrounding its decision whether to institute a post-grant proceeding after a petition is filed.

Recently, the Patent and Trademark Office issued a Federal Register notice regarding a Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board. The full text of the notice can also be found in PDF format here and here.
Continue Reading PTAB Seeks Comments On Its Approach To Institution Decisions

On October 13, 2020, the Supreme Court granted petitions for certiorari filed by the United States (in No. 19-1434), Smith & Nephew, Inc. (in No. 19-1452), and Arthrex, Inc. (in No. 19-1458) regarding the appointments of the administrative patent judges of the Patent Trial and Appeal Board.  No date has been set to argue the cases, but the Court consolidated them and allotted one hour for argument time.  Because the Court consolidated the cases for briefing and oral argument, it noted that “future filings and activity in the cases will now be reflected on the docket of No. 19-1434.”  On December 31, 2020, the Court set oral argument for March 1, 2021.

The various petitions were granted only to the extent of “Questions 1 and 2 as set forth in the July 22, 2020 Memorandum for the United States.”  See Orders List at 2.

Question 1 asks “[w]hether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior Officers’ whose appointment Congress has permissibly vested in a department head.”

Question 2 asks “[w]hether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. § 7513(a) to those judges.”

Links to the briefs, and details of the briefing schedule, are below. [Updated 1/8/2021, to reflect most current filings, and argument date]
Continue Reading Supreme Court grants certiorari in PTAB Appointments Clause cases

The Patent Trial and Appeal Board (“Board”) recently designated two decisions as informative regarding discretionary denials of institution: Apple Inc. v. Fintiv, Inc., Case IPR2020-00019, Paper 15 (May 13, 2020), and Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case IPR2019-01393, Paper 24 (June 16, 2020).  These decisions show how the Board applied the Fintiv factors established in its recent Precedential Order to determine whether co-pending district court litigation should result in a discretionary denial of institution under AIA 35 U.S.C. § 314(a).
Continue Reading New PTAB Informative Decisions: Applying the Fintiv Factors in View of Parallel District Court Litigation

In a previous post, we reported that the PTAB’s Precedential Opinion Panel (POP) tackled issue joinder in Proppant Express Investments v. Oren TechsIPR2018-00914, Paper 24 at 2.

As background, in Proppant, the POP addressed the following issues:

  1. Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
  2. Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
  3. Does the existence of a time bar under § 315(b), or any other relevant facts, have any impact on the first two questions?

The POP determined that § 315(c) “provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding.”  IPR2018-00914, Paper 38, at 4.

In Facebook, Inc., v. Windy City Innovations, LLC, the Federal Circuit reversed the POP opinion.  953 F.3d 1313 (Fed. Cir. 2020) (the “Decision”).  Specifically, the court held that “[t]he clear and unambiguous text of § 315(c) does not authorize same-party joinder, and does not authorize the joinder of new issues.”  Decision at 1322. 
Continue Reading Federal Circuit Reverses PTAB’s Precedential Opinion Panel on Aspects of Joinder

The Patent Trial and Appeal Board (“the Board”) recently provided guidance to practitioners on its discretion to deny institution under 35 U.S.C. § 325(d) and § 314(a) by designating three decisions as informative or precedential.[1]  Under 35 U.S.C. § 325(d), the Board may deny institution of inter partes review (“IPR”) because “the same or substantially the same prior art or arguments previously were presented to the Office.” Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, IPR2019-01469, Paper 6 (PTAB Feb. 13, 2020) (precedential), Oticon Med. AB v. Cochlear Ltd., IPR2019-00975, Paper 15 (PTAB Oct. 16, 2019) (precedential), and PUMA N. Am., Inc. v. NIKE, Inc., IPR2019-01042, Paper 10 (PTAB Oct. 31, 2019) (informative) all provide guidance related to § 325(d).  Under 35 U.S.C. § 314(a), the Board may deny institution as an exercise of its discretion in certain circumstances, such as when parallel proceedings are underway.  In Oticon, the Board also addressed the parallel proceedings issue under § 314(a).

In Advanced Bionics, the Board denied institution under § 325(d), set forth a two-part framework for applying § 325(d), and explained how the factors from Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (Dec. 15, 2017) (precedential as to § III.C.5, first paragraph) (“Becton, Dickinson”) fit into the two-part framework.

In Oticon, however, the Board refused to exercise its discretion under § 325(d) and instituted the proceeding over similar arguments by a patent owner. While it did not characterize the § 325(d) inquiry as a two-part analysis, and it grouped the Becton, Dickinson factors into three categories, the Board focused on the same two issues: (1) whether the same or substantially similar prior art and arguments were previously considered, and (2) whether the Patent Office erred in its prior assessment of the art. The Board also rejected a request to deny institution under § 314(a) and distinguished an earlier precedential ruling, NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, slip op. at 19–20 (PTAB Sept. 12, 2018) (Paper 8) (precedential) (“NHK”), in which institution was denied because of a parallel district court proceeding.

In PUMA, the Board denied institution under § 325(d) after analyzing the Becton, Dickinson factors and finding the same prior art was previously considered and the petitioner did not persuasively demonstrate the examiner materially erred in evaluating the prior art during prosecution.

This is a longer read, but worthwhile, given the importance of the issues.  As detailed in the following summaries, the rulings collectively show the fact-specific nature of the § 325(d) and § 314(a) inquiries. The Board will assess the prior-art teachings considered in prosecution and earlier Board proceedings, will compare those to the teachings asserted in the petition, will carefully compare the disclosures of supposedly duplicative prior art, and will assess the issues and progress of parallel district court cases. Litigants should be prepared for this level of scrutiny and establish the needed records on the prior art teachings and parallel district court cases.
Continue Reading Recent Precedential and Informative Decisions Clarify Standard for Discretionary Denials of Institution