PTAB Roundup

SCOTUS: Anxiously awaiting Oil States and SAS InstituteSo are we, and it is not just us. The Court has yet to issue opinions in five cases argued in October and four others in November-December, including Masterpiece Cakeshop.

Update: Supreme Court Decides Oil States and SAS Institute Inc. v. Iancu

District Court: IPR estoppel – Reversing references does not change the ground. The Board denied institution to the defendant’s obviousness ground, A in view of B, but instituted on other grounds. The Court ruled that the defendant was not estopped from raising the reversed ground, B in view of A, for the same reason (i.e., Shaw) that it would not be estopped from raising A in view of B. Nox Medical EHF v. Natus Neurology Inc., No. 1:15-cv-00709, ECF No. 242 (D. Del. Apr. 12, 2018) (Andrews).For more cases addressing Shaw and the IPR estoppels, see the January 26, 2018 Roundup.

District Court: Lift stay for one of five (now four) asserted patents.The Court previously stayed the entire case because the Board instituted IPRs on four of the five asserted patents. The Board denied review of the asserted ’034 patent, but that patent was similar enough to the instituted ’696 patent to justify staying the case for it, too. Now, the plaintiff sought to dismiss its ‘696 patent infringement claims and go forward on just the ‘034 patent, bifurcating it from its claims involving the other three still-stayed patents. The Court granted the motion, reasoning that dismissing the ‘696 patent’s claims significantly changes the circumstances of the original stay. The ’034 patent involved “significantly different technology” than the three stayed patents, and going forward on it alone will help minimize juror confusion. Rovi Guides, Inc. v. Comcast Corp., No. 1:16-cv-09278, ECF No. 379 (S.D.N.Y. Apr. 5, 2018) (Oetken).

PTAB: Rehearing granted! The Board granted the petitioner’s request for rehearing and instituted on a previously denied ground, stating that it previously “applied an overly restrictive standard for the lead compound analysis and for the reason to combine the cited references.” It maintained its decision denying institution of a second ground, finding that the petitioner failed to show that a reference is a prior-art printed publication. Judge Fitzpatrick dissented on this point. He would have found that the reference, a drug label with prescribing information, was published by the FDA and readily available at the FDA’s public web site. Incyte Corp. v. Concert Pharms, Inc., IPR2017-01256, Papers Nos. 13 and 14 (April 9, 2018) (Hulse, joined by Green with Fitzpatrick dissenting-in-part).

PTAB: Don’t cramp our “industry standard” style. The patent owner asked the Board to dismiss because the petitioner had skirted the word-count limit by omitting nearly 800 spaces from where they would normally occur (e.g., one word for “Ex.1001” instead of two words for “Ex. 1001,” likewise for “¶24” instead of “¶ 24”). Noting that it had never dismissed a petition for a word-count violation, the Board gave the patent owner an equivalent number of additional words in its responses and ordered the petitioner to use “industry standard citation formats going forward.” St. Jude Medical, LLC v. Snyders Heart Valve LLC, IPR2018-00105, Paper 12 (Apr. 3, 2018) (Scanlon, joined by Weatherly and Worth).

PTAB: Even though a predictable art, secondary considerations came in first. In a case involving bicycle chains and sprockets, the Board found that the references taught all of the limitations and the “evidence weigh[ed] slightly in favor” of making the combination. But when evaluating all four Graham factors, the patent owner’s “extremely strong showing of objective indicia of non-obviousness” including “very strong showings on industry praise, skepticism, and long-felt need, a strong showing on commercial success [on certain claims] and weak showings on licensing and copying” compelled a conclusion that the petitioner failed to show the claims were obvious. Fox Factory, Inc., v. SRAM, LLC, IPR2016-01876, Paper 59 (Apr. 2, 2018) (Cherry, joined by Kim and Ippolito).

PTAB: Who is the Owner? IPR stayed until ownership resolved: The petitioner identified InfrAegis as the patent owner in its filings. However, Human Sciences, a different entity asserted the patent in the district court and sought to participate in the IPR—despite acknowledging that the assignment to it from InfrAegis might have been defective. Because the ownership of the challenged patents was unclear, the Board stayed the instituted IPR pending resolution of the ownership issue. It did, however, allow the petitioner to move to terminate the IPR without prejudice. Fedex Corp., v. Human Sciences HC Ltd, IPR2017-01761, Paper 17 (April 10, 2018) (Zado, joined by Horvath and Roesel).

PTAB News: The Board’s Judicial Conference will be on Thursday, June 28, 2018, at the Madison Auditorium on the USPTO campus in Alexandria, VA. Attendance is free. For more information, click here.

PTAB Statistics: The results of the PTAB’s Expanded Panel and Orange Book studies are here. Interestingly, there have been only 59 decisions with expanded panels, and the majority (31) of those were interlocutory orders rather than institution for final written decisions. Orange Book-listed patents are those patents listed with the FDA and are subject to the Hatch-Waxman Act. There have been 389 petitions filed against Orange Book-listed patents, 211 instituted proceedings (66% institution rate), and 82 final written decisions (51% all claims patentable, 46% no claims patentable).

*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Timothy CaineJason HeidemannArvind JairamWing LiangSandip PatelRebecca RabensteinDavid RoadcapStevan StarkTodd Siegel, and Amy Simpson. These case summaries are factual in nature and do not reflect the opinions of the contributors, their law firms, or the PTAB Bar Association. Individual contributors do not draft or otherwise have any substantive input into summaries of any case in which the contributor (or his or her firm) was involved.