First PGR Final Written Decisions – Look a Lot Like IPR/CBM Decisions

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Despite the overwhelming popularity of IPR proceedings since their inception, about three and a half years ago, Post Grant Review has, to date, been little used. There are probably valid reasons for this low popularity, including the limited (current) subset of patents subject to PGR, the broader estoppel associated with PGR (as compared to IPR), and the fact that 35 USC § 101 challenges are now relatively quick and inexpensive at the district court level, in view of the Alice decision. Regardless, many have been anticipating the first Final Written Decisions from PGR proceedings to see this next chapter in the game-changing world of post-grant proceedings.

Perhaps unsurprisingly, however, the first PGR Final Written Decisions are largely reminiscent of IPR/CBM decisions. See, e.g., Am. Simmental Assoc. v. Leachman Cattle of CO., LLC, PGR2015-00003 (June 13, 2016). For example, like the majority of decisions from IPR, the Patent Owner lost its claims. Further, Patent Owner’s Motion to Amend was denied for failing to meet the burdens of the Board jurisprudence, including Idle Free. The details of the decisions were also similar to PGR’s well-known predecessors. To that end, the claim construction analysis played a central role, with the Board undertaking a detailed and thorough analysis.

Indeed, the only major difference between the first PGR decisions and those we have come to know via IPR proceedings is the subject matter of the dispute, which is unique to PGR. For example, Petitioner challenged the claims-at-issue under an obviousness analysis using a prior art reference that was neither a patent nor a printed publication. Such an unpatentability ground is, of course, inappropriate for IPR petitions. Ultimately, this ground was denied because insufficient corroborating evidence of testimony regarding the prior art was put forth by the Petitioner.

Patent Owner did not have the same success, however, with the second main challenge ground – a challenge that the claims failed to recite statutory subject matter. In this analysis, and pursuant to the first step of the Alice test, the Board found that the claims were directed to an abstract idea; specifically, “a fundamental economic practice…long prevalent in our system of commerce.” Opinion at 29. Pursuant to the second step of the Alice analysis, the Board determined that the claims failed to recite “significantly more.” Instead, they merely claimed generic computer hardware used in a conventional manner. As such, all of the challenge claims were deemed unpatentable.

So, PGR is off and running, and the news is just as positive for Petitioners as the results of the majority of IPR proceedings.

 

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.

First Petition for Post Grant Review Filed

LoomAt long last, a Petitioner has dipped its toes in the Post-Grant Review waters, filing the first ever PGR petition in LaRose Industries, LLC v. Choon’s Design Inc., PGR2014-00008.  The popular “Rainbow Loom” is the commercial embodiment of the patent claims at issue.

The patent at issue is, of course, a “first to file,” post-AIA patent, having been filed after March 13, 2013 (US Patent No. 8,684,420).  Jurisdictional basis for a Post-Grant Review may, however, be at issue, as the patent claims priority to numerous earlier-filed patents.  Petitioner argues, however, that the claims are based on new subject matter that was added in the post-AIA application.  See, e.g., Petition at 5, 23-36.

The bases for the petition include 35 USC §§ 102, 103, and 112.  The first ground discussed in the petition is a challenge under §112 that the challenged claims lack written description support in the specification (Petition at 45), are indefinite (Id. at 46-47), and are not enabled (Id. at 48).  Also particular to Post Grant Review procedures is the assertion in the Petition that the challenged claims are anticipated by the commercial embodiment of a competitive product.  Inter Partes Review procedures are, of course, limited to 102 and 103 grounds based on patents and printed publications.  Here, the actual sale of a product is serving as the basis for the 102 challenge – proper subject matter for a PGR.

Another new era in patent litigation has begun and we look forward to watching the developments in this and future PGR proceedings.