Sep 25

Happy 2nd Birthday, Inter Partes Review – By the Numbers

IPR InsertWelcome to Volume 7 of our IPR-PGR Quarterly Report. Please contact us with any questions about these Patent Office procedures.

We take special note of three interesting statistics this quarter.  First, obtaining amended patent claims in these proceedings remains difficult.  After 1 motion to amend was granted last quarter, this quarter saw a complete shutout.  No additional motions to amend granted. Further, it seems that many new decisions, denying a motion to amend, add additional requirements and hurdles. It will be interesting to see if the argument currently before the Federal Circuit, that the broadest reasonable interpretation standard is inappropriate when a Patent Owner cannot effectively amend claims, is accepted.

Second, district courts continue to demonstrate an increased comfort with the ability of IPR proceedings to simplify issues at trial, including as compared to reexamination proceedings, in an increasing grant rate on motions to stay.  While this is still very much a judge and court-specific decision, defendants will succeed on a contested motion to stay almost 2 out 3 times.

Third, we took a broader look at claim survival this quarter, not just looking to the rate at which claims from an IPR “trial” were shown to be unpatentable in Final Written Decisions. We added in claims that were not put into a “trial” at all – raising the claim survival rate to 41%.  If only claims that are put into trial are considered, the survival rate is 27.8%.

The Federal Circuit has a mounting pile of appeal briefs relating to IPR practice – will we soon see another tidal wave of change as the patent appeals court weighs in?

Sep 19

Provisional Application Not § 102(e) Prior Art in IPR

Folder security whit  chain and padlockThe PTAB taught a Petitioner a valuable lesson regarding the scope of 35 U.S.C. § 102(e) in Sequenom Inc. v. Stanford Univ., IPR2014-00337, finding that a provisional patent application cannot be used as prior art in an inter partes review under that section. Pursuant to that determination, the Board denied the Petition.

The Petition had based all challenge grounds on a provisional application and argued that the challenged claims were unpatentable pursuant to § 102(e). The Board instructed, however, that only two types of documents may be relied upon under § 102(e) to show that claims are unpatentable: “(1) an application for patent, published under section 122(b), . . . or (2) a patent granted on an application for patent.” 35 U.S.C. § 102(e). Id. at 3.

As a provisional application is not “an application for patent, published under section 122(b)” because § 122(b) states expressly that “[a]n application shall not be published if that application is . . . (iii) a provisional  application filed under section 111(b) of this title.” 35 U.S.C. § 122(b)(2)(iii). Accordingly, a provisional patent application is not “an application for patent, published under section 122(b),”and therefore, does not qualify as prior art under § 102(e). Id. In light of the fact that every ground of unpatentability advanced by Petitioner relied on the provisional application, the Petition was denied. Id. at 5.

Sep 09

Despite Lack of Familiarity with Specific Technology-at-Issue, Industry Expert Not Excluded

iStock_000011114669SmallThe Board continued its reluctance to exclude evidence in inter partes review proceedings in Primera Technology, Inc., v. Automatic Manufacturing Systems, Inc., Final Written Decision, IPR2013-00196 by denying a motion to exclude the expert testimony of Patent Owner’s industry expert. The Board has indicated its desire to be presented with a story regarding the patentability or unpatentability of the patent subject to an IPR. By continuing to deny motions that seek to exclude experts with long tenures in a particular industry, though not necessarily with the specific technology at issue in the IPR, the Board may be indicating a preference for industry experts who can tell a long, detailed story about the relevant technology.

In Primera, Petitioner challenged the credibility of Patent Owner’s expert, seeking to exclude his declaration. Id. at 26. More specifically, Petitioner argued that during his deposition, the expert admitted to having no familiarity with the general state of the art, contrary to his declaration. Id. Petitioner also argued the expert’s testimony was inadmissible under Fed. R. Evid. 702 because he was not qualified as an expert. Id.

The Board examined the expert’s work experience and skill set and denied the relief requested in the motion to exclude. Id. at 28. First, the Board gave credit to the expert for his 21 years of industry experience in various, related technologies. Id. Second, though the expert lacked specific experience with the type of microscope slide printer at issue went to the weight and sufficiency of his testimony, rather than its admissibility. Citing Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1221 (Fed. Cir. 2006). Id.

In the end, the Board denied the motion to exclude.

Sep 05

Another Requirement to a Successful Motion to Amend Claims

Concept - businessman who has failedIt is getting hard to keep track of all the hoops and hurdles that need to be navigated in bringing a successful motion to amend in an inter partes review proceeding.  Each new decision seemingly raises the bar further.  The latest task to add to the list is to ensure that, among all the other things that must be established in the 15 page motion, support for the new amendment is shown in the application from which priority is claimed (of course), but also in each intervening application from that priority document through the patent-at-issue.  In Toyota Motor Corp., v. American Vehicular Sciences LLCIPR2013-00415, Paper 40, Patent Owner sought clarification regarding its Motion to Amend Claims and also sought authorization to file a second Motion to Amend Claim in response to procedural argument made by Petitioner in its opposition to the Motion to Amend. Id. at 2. The purpose of the amendment was to allow Patent Owner to point to supporting disclosure in each ancestral application in the chain of applications leading to the original application from which priority was claimed.  Id.

The Board pointed out that, if any application in the priority chain fails to make the requisite disclosure of the claimed subject matter under 35 U.S.C. § 112, first paragraph, the later-filed application is not entitled to the benefit of the filing date preceding the break in disclosure within the priority chain. Hollmer v. Harari, 681 F.3d 1351, 1355 (Fed. Cir. 2012).

There were five intervening applications between Patent Owner’s involved patent and the application from which Patent Owner claimed priority. Yet, Patent Owner’s Motion to Amend Claims discussed supporting disclosure only with regard to the application that issued as the involved patent and the original application.  The Motion to Amend did not include an explanation of support relative to the five intermediate applications. Id. at 3.

The Board determined at the late stage in the proceeding, there was insufficient time to provide Petitioner sufficient time to respond to a second motion. Id. at 4. It was further determined it would be improper for Patent Owner, in its Reply to Petitioner’s Opposition to Patent Owner’s Motion to Amend Claims, to address and account for the supporting disclosures, if any, in any of the five intervening ancestral applications. Id.  As such, another Motion to Amend will surely go down to defeat.

Sep 04

Late Addition of a Real-Party-in-Interest Allowed in Inter Partes Review

white puzzle with one piece missing, on blueWhat if you come up short in naming all of the real-parties-in-interest to an inter partes review proceeding?  Will the Board allow you to amend your petition? Four related IPR proceedings required the Board to address this issue in Petroleum Geo-Services Inc., v. WesternGeco LLC (IPR2014-00678, IPR2014-00687, IPR2014-00688, and IPR2014-00689).

Just prior to the date when Patent Owner’s preliminary response was due, Petitioner set up a conference call with the Board to inquire about adding an additional real-party-in-interest (RPI) to its petition.  Petitioner argued that, pursuant to the Board’s ruling in ZOLL v. Philips, IPR2013-00609, Paper 15 (March 20, 2014), because adding additional RPIs would not affect any statutory bar, the Board should allow such addition via an updated mandatory notice and assign the petition a new filing date consistent with the mandatory notice filing.  Further, Petitioner argued, because Patent Owner had already prepared its preliminary response when Petitioner proposed the addition of more RPIs, Petitioner argued that a shortened period of 6 weeks should be given for the Patent Owner to submit the preliminary response.

Patent Owner disagreed, citing 35 U.S.C. § 312(a), which requires that a petition for inter partes review be considered only if all RPIs are identified. Accordingly, per Patent Owner, the petitions at issue should be denied entirely and Petitioner should be forced to re-file.  Additionally, Patent Owner argued that it should be given a full three months to file a preliminary response, because it needed time for adequate discovery with the addition of the new RPI.

The Board noted that since the additional RPI was not omitted from the original petition due to clerical error, the petition was incomplete.  However, the Board allowed the new RPI to be put on-record with an updated mandatory notice.  Accordingly, the petitions were assigned new filing dates of the date of filing of the updated mandatory notice. The Board noted that time was needed for Patent Owner to make appropriate changes to its preliminary amendment and also its motion to seal with the addition of more RPIs.  However, the Board noted that Patent Owner’s preliminary response was likely substantively complete and only needed minor amendment.  Therefore, Patent Challenger’s proposed six-week time limit was appropriate.

Sep 03

Second Petition Seeking Post Grant Review is Filed

iStock_000012593731SmallFinally, the “PGR” portion of this site is starting to gain some momentum as Accord Healthcare brought the second ever Post Grant Review PetitionAccord Healthcare, Inc. v. Helsinn Healthcare S.A., et al., IPR2014-00010.  Accord challenges the validity of the patent-in-suit pursuant to 35 U.S.C. § 112(a) (lack of written description and enablement) and 35 U.S.C. § 112(b) (failure to particularly point out and distinctly claim the subject matter the inventors regard as the invention).

As the “theory” of Post Grant Review has been discussed and evaluated, § 112 grounds, like those raised in this PGR, were considered ripe opportunities for challenges in these new proceedings.  The underlying downside of such action, however, was the strong estoppel that attaches to Post Grant Review that will cripple future attempts to challenge the validity of the patent-at-issue. As compared to IPR, where the estoppel can only apply to §§ 102 and 103 grounds, based on printed publications or patents, in a PGR, the estoppel extends to all grounds of invalidity that were raised, or reasonably could have been raised.

Where a § 112 defense is a Petitioner’s best defense, though, it seems likely that such defense will be given a more thorough and competent review at the PTAB, with its stable of technically-oriented and patent-savvy judges, than it would with the typical district court judge in federal court litigation.

Aug 29

Corroborating Evidence Insufficient in Final Written Decision Canceling All Claims

iStock_000028428166_SmallOne of the more fact-dependent inquiries in patent disputes is the issue of conception and reduction to practice.  This issue was raised in an inter partes review setting in CBS Interactive Inc. v. Helferich Patent Licensing, LLC, IPR2013-00033, Paper 122 (Final Written Decision), wherein Patent Owner sought to swear behind cited prior art by filing a declaration from the inventor and a handwritten specification claimed to have been written before the critical date. Id. 44.

The art at issue was 35 U.S.C. § 102(e) art — filed “before the invention by the applicant for patent.”  In the inventor’s declaration, he testified that he conceived the subject matter of each challenged claim prior to the filing date of the prior art.  As corroborating proof of this earlier invention, the inventor cited to an undated, handwritten specification allegedly describing the claimed invention. The inventor testified that he completed the handwritten specification prior to the critical date.  Id. at 45.

Of course, an inventor’s testimony, standing alone, is insufficient to prove conception — some form of corroboration is required.  In re NTP, Inc. 654 F.3d 1279, 1291 (Fed. Cir. 2011). Id. at 45. The Board determined that the undated, handwritten specification did not qualify as corroborating evidence because it was undated and unsigned. The inventor’s testimony, that he prepared and completed the specification prior to the critical date, was deemed insufficient to corroborate the date of the specification.  Further, an inventor’s own testimony is not “independent” corroboration of proof that comes from the inventor himself.  Id. at 47.  Failing to swear behind the critical prior art, the Board ultimately determined that all challenged claims were unpatentable.

Aug 28

Conclusory Declaration Testimony Again Leads to Unsuccessful IPR Petition

SONY DSCSome of the best inter partes review lessons can be learned from decisions denying institution of an inter partes review trial.  Among the chief grounds for denying petitions, failure to provide competent expert testimony in support of a petition, presented itself again in Panasonic Corp., et al. v. Optical Devices, LLC, IPR2014-00302, Paper 9.

In Panasonic, Petitioner asserted two anticipation grounds of unpatentability, relying on two separate references. In support of the anticipation arguments, the Board found that Petitioner improperly picked and chose from various descriptions of each respective reference to allegedly disclose all limitations of the challenged claims, rather than pointing to a single anticipatory embodiment.  The impropriety of this course of action was discussed previously.

Of particular interest in this case was the Board’s treatment of declaration testimony presented by Petitioner.  More specifically, Petitioner’s expert’s declaration simply stated that each of the two allegedly-anticipatory references disclosed all required limitations, including inherently disclosing a critical limitation. The declaration testimony provided little detail or support, however, beyond the bare statements of anticipation. Accordingly, the declaration testimony was judged by the Board to be conclusory, particularly with respect to the inherent disclosure element.  As such, the Board gave the testimony little weight.

In view of the weak anticipation arguments and conclusory declaration testimony, Patent Challenger failed in getting any challenged claims in to an IPR trial.

 

Aug 27

More Fun with the One-Year Time Bar of § 315(b)

hourglassThe nuances of the time bar of 35 U.S.C. § 315(b) continue to be explored in various IPR decisions.  In Amneal Pharmaceuticals, LLC v. Endor Pharmaceuticals Inc., IPR2014-00360, Paper 15, Patent Owner asserted that the Petition for Inter Partes Review was time-barred under § 315(b) because Petitioner received an amended complaint in co-pending litigation, asserting the patent-at-issue, in conjunction with the filing of a motion for leave to serve an amended complaint.  As explained below, the Board found that the petition was not barred, however, because service of the amended complaint, pursuant to § 315(b), could only have been accomplished after the Court granted leave.  Service of the amended complaint, as part of the motion to amend, is not service under § 315(b).

More specifically, § 315(b) provides that an inter partes review may not be instituted based on a petition “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”

On December 11, 2012, the ’216 patent issued to Patent Owner. Prelim. Resp. 5. On January 9, 2013, Patent Owner filed an “Unopposed Motion to Amend Complaint Under Rule 15(a)” in an ongoing litigation between Petitioner and Patent Owner.  Attached to the motion was the proposed amended complaint.  On January 14, 2013, the Court granted the motion.  In accordance with that order, on January 17, 2013, Patent Owner filed its Second Amended Complaint. Id at 3. The IPR petition in this proceeding was filed on January 16, 2014 – more than one year from the date that the motion was filed, attaching the complaint, but less than one year from the date that the complaint was actually filed, following the court’s grant of the motion to amend.

As such, Patent Owner requested denial of the Petition, arguing that Petitioner was time-barred from seeking inter partes review of the ’216 patent under § 315(b), because Petitioner was served with a complaint on January 9, 2013, i.e., more than one year before the January 16, 2014, filing date of the Petition in this proceeding. Id. at 4.  In support of its motion, Patent Owner pointed out that, per local rules of the court, electronic filing is equivalent to service.  Thus, according to Patent Owner, when the district court electronically mailed the electronic notice regarding the Motion to Amend Complaint to Petitioner, it “effected service of the Second Amended Complaint on January 9, 2014.” Paper 15 at 4. Because §315(b) refers to being “served,” Patent Owner contends that it does not matter that Patent Owner did not file the Second Amended Complaint until January 17, 2013; instead, it only mattered when Patent Owner served the Second Amended Complaint, which, according to Patent Owner, occurred on January 9, 2013. Id.

The Board was not persuaded by this creative argument from Patent Owner. Instead, the Board agreed with Petitioner that Patent Owner did not “have the legal right to file or serve the Second Amended Complaint (‘SAC’) until the District Court granted it leave to do so on January 14, 2013.” Id. Petitioner cited Federal Rule of Civil Procedure 15(a)(2), which permits a party to file an amended pleading “once as a matter of course,” but requires that “in all other cases, a party may amend its pleading only with the opposing party’s written consent or court’s leave.” Fed. R. Civ. P. 15(a)(2). Under this rule, according to Petitioner, Patent Owner required the district court’s leave to file the SAC. Reply 3. Paper at 4. Thus, Patent Owner filed and served the SAC on January 17, 2013, after the court granted that leave. Id.  The Board agreed.

Aug 22

§ 325(d) Used by the Board to Deny Petitions for Inter Partes Review

iStock_000011114669SmallWe wrote yesterday about the Board’s willingness to come to a different conclusion than that of the original patent examiner on the adequacy of a 131 declaration.  Further, we have discussed in the past how the Board has been more than willing to reconsider arguments and art that were previously before the Patent Office.

It is fair to point out, therefore, that the Board is sometimes willing to provide deference to previous decisions.  In Unilever, Inc. v. The Procter & Gamble Co., IPR2014-00506 and IPR2014-00507, the Board denied two petitions for inter partes review because substantially similar arguments were presented (and denied) in previous IPRs.

In the previous proceeding (IPR2013-00505), Unilever had challenged 33 claims of the patent-at-issue. The petition was denied as to several challenged claims of the patent-at-issue, and Unilever subsequently challenged the denied claims again in IPR2014-00506, following an unsuccessful Request for Rehearing. Unilever further requested joinder of the ‘506 proceeding with the much earlier ‘505 proceeding.

Pursuant to 35 U.S.C. § 325(d), the Board is permitted to deny petitions that raise substantially the same prior art or arguments previously presented to the Office. In applying the facts of the ‘506 proceeding to this statutory provision, the Board made several key observations:

(1) The later ‘506 proceeding challenged each of the claims that were denied review in the earlier ‘505 proceeding;
(2) The later ‘506 proceeding involved thirteen pieces of prior art, six of which were also included in the ‘505 proceeding;
(3) Patent Owner provided no evidence or indication that the references that were new in the ‘506 proceeding were not available at the time of the filing of the ‘505 proceeding;
(4) Nine of the thirteen grounds of unpatentability in the ’506 proceeding rely, at least in part, on references presented in the ‘505 proceeding; and
(5) There were several arguments in the ‘506 proceeding which mirrored the same deficient arguments of the ‘505 proceeding, with the only difference being reliance on new prior art which did not strengthen the deficient arguments.

Accordingly, based on these facts, the Board rejected the petition in the ‘506 proceeding as raising substantially the same prior art or arguments previously presented in the ‘505 proceeding, pursuant to 35 U.S.C. § 325(d).

The Board addressed nearly identical issues in IPR2014-00507. In a previous proceeding (IPR2014-00509), Unilever had previously challenged several claims of the ‘300 patent. The petition was denied as to several challenged claims of the ‘300 patent, and Unilever subsequently challenged these denied claims in IPR2014-00506 following an unsuccessful Request for Rehearing. Unilever further requested joinder of the ‘507 proceeding with the ‘509 proceeding.  Using a substantially similar analysis as that presented in the ‘506 proceeding, the Board rejected the petition in the ‘507 proceeding as raising substantially the same prior art or arguments previously presented in the ‘509 proceeding under 35 U.S.C. § 325(d).

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