IPRs & Other Post Grant Proceedings

On Friday, May 1, 2020, Chief Administrative Patent Judge Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) paused all activity in the significant number of PTAB cases remanded to it from the Federal Circuit under Arthrex (discussed here). 

On May 5, 2020, the Patent Trial and Appeal Board (“PTAB”) designated one decision as precedential and removed the precedential designation on another. The newly-designated precedential opinion lays out factors that the PTAB considers when asked to exercise its discretion to deny institution in light of an imminent trial.

Last week, the Federal Circuit, in a precedential decision, reinforced that an accused infringer can be a “prevailing party” for the purposes of seeking attorneys’ fees under 35 U.S.C. § 285 when it successfully invalidates the asserted patent at the Patent Trial and Appeal Board (“PTAB”). 

On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy.  Assignor estoppel is an equitable doctrine based on the principle of fair dealing that prevents a party who divests a patent from later challenging the validity of that patent.

On Monday, in Thryv, Inc. v. Click-to-Cal Technologies, the Supreme Court held that § 315(b) time-bar determinations are not subject to judicial review. In this 7-2 decision penned by Justice Ginsburg, with Justices Gorsuch and Sotomayor dissenting, the Court determined that time-bar determinations are unreviewable because they are “closely tied” to the Director’s decision to institute an inter partes review (IPR).

Recently on April 14, 2020, the Patent Trial and Appeal Board (“Board”) designated Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) “Informative”.  In Whirlpool, the Board reversed the Examiner’s obviousness rejection of claims 1, 4, 6, and 8 of U.S. Patent No. 6,082,130 (“the ’130 patent”), finding that the Patent Owner, Whirlpool Corporation, established a nexus between its objective evidence of non-obviousness and the claimed invention. 

Last week, the Patent Trial and Appeal Board (“PTAB”) designated a January 24, 2020 decision, finding objective indicia of nonobviousness, such as evidence of long-felt need and industry praise, saved a patent owner’s amended claims from invalidation, as precedential.

The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) recently grappled with the admission into evidence of expert deposition testimony that was presumably harmful to the petitioner in an inter partes review (IPR), and barred the testimony from coming into evidence. 

On Thursday, the Federal Circuit ruled that the Patent Trial and Appeal Board (“PTAB”) must give the parties proper notice if considering a sua sponte theory of unpatentability in relation to a motion to amend.

The Precedential Opinion Panel (“POP”) of the U.S. Patent Trial and Appeal Board (“Board”) recently rejected a rehearing request from a petitioner where institution was denied because of the likelihood that a district court trial would occur prior to a final written decision. 

On Tuesday, March 24, 2020, the Patent Trial and Appeal Board (“PTAB”) designated two inter partes review (“IPR”) decisions as precedential and one as informative. These decisions concern PTAB’s discretion to deny institution of an IPR under 35 U.S.C. § 325(d) and 314(a). 

The U.S. Patent Trial and Appeal Board (“PTAB”) recently designated its decision in Ex Parte HANNUN (Appeal 2018-003323) (“HANNUN”) as being informative regarding the application of the latest 2019 revised guidance on patent-eligible subject matter. 

To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial. 

The Court of Appeals for the Federal Circuit (CAFC) has recently reminded the Patent Trial and Appeal Board (the Board) that it may not rely on evidence and arguments that fall outside the scope of the instituted grounds during Inter Partes Review (IPR) proceedings. In re IPR Licensing, Inc., No. 2018-1805 (Fed. Cir. Nov. 22, 2019). 

Judge Gilliam of the Northern District of California recently answered this question and provided helpful guidance on the interplay of IPRs, reexaminations and district court litigation. In IXI Mobile (R&D) Ltd., et al., v. Samsung Elec. Co. Ltd. and IXI Mobile (R&D) Ltd., et al. v. Apple Inc., Judge Gilliam denied plaintiffs’ (“IXI”) motion for leave to amend their infringement contentions and asserted claims because IXI was not diligent in identifying new contentions or new accused products.

In a decision with potential far-reaching implications, Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit held Thursday that appointments of Administrative Patent Judges of the Patent Trial and Appeal Board violated the Appointments Clause of the U.S. Constitution.

Earlier this week, the United States Patent and Trademark Office (“USPTO”) proposed rule changes for amending patents in AIA proceedings.  The proposed rule changes would apply to inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent review (“CBM”) (collectively, “post-grant trial”) proceedings before the Patent Trial and Appeal Board (“PTAB”) to make explicit that a patent challenger bears the burden of persuasion regarding motions to amend filed during these proceedings.

In a precedential opinion on October 4, 2019, the United States Court of Appeals for the Federal Circuit, in OSI Pharmaceuticals v. Apotex, No. 2018-1925, reversed the Board’s Final Written Decision in an inter partes review (“IPR”) finding that claims of United States Patent No. 6,900,221 (the “‘221 patent”) were invalid as obvious.

On August 29, 2019, the Patent Trial and Appeal Board (PTAB) designated as precedential its January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc.  In Cisco, the PTAB held that 35 U.S.C. § 315(a)(1) bars institution of IPR if the petitioner filed an earlier civil action, even if such action was voluntarily dismissed by the petitioner without prejudice.    

The PTAB’s Precedential Opinion Panel, colloquially referred to as “the POP,” ruled that the one-year window to file inter partes review (“IPR”) petitions begins once a complaint alleging infringement is served—even if the complaint is defective.