PTAB Roundup

CAFC: Motions to amend after SAS and Aqua ProductsThe Federal Circuit affirmed the Board’s unpatentability decision, as the petitioner’s theory was properly raised in the petition and the Board’s findings were supported by substantial evidence. It vacated the Board’s denial of the patent owner’s motion to amend, however, because the pre-Aqua Products decision improperly placed the burden of persuasion on the patent owner. The Court also instructed the Board to determine in the first instance whether it may, under SAS Institute and other “recent precedent,” take into account arguments and prior art not raised in the opposition to the motion to amend, and if so, “what procedures consistent with the APA are required to do so.” The Court also affirmed the Board’s finding that certain issued claims survived the IPR, reasoning that the Board is not required to take into account art and arguments first raised in the opposition to the motion to amend rather than the IPR petition. Sirona Dental Sys. GmbH v. Institut Straumann AG, Nos. 2017-1341, 1403 (June 19, 2018) (Moore, joined by Prost and Stoll).

CAFC: The Klopfenstein factors for presentations. The Federal Circuit affirmed the Board’s finding that claims survived some of the prior art, but vacated the Board’s findings that a video and slides were not “printed publications” made available to the public. The Board failed to consider relevant factors set forth in In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004), including the size and nature of the meetings where the materials were presented, whether interested members of the public could attend, and whether copies were disseminated without any expectation of confidentiality. Medtronic, Inc. v. Barry, No. 2017-1169 (June 11, 2018) (Chen, joined by Taranto and Plager).

District Court: Stay in view of PTAB’s post-SAS order. After the Board partially instituted an IPR over some, but not all, of the asserted claims, the plaintiff narrowed its case to assert only the denied claims and claims from four other unaffected patents. Post-SAS, the Board added the denied claims into the instituted proceeding, and the Court granted defendant’s motion to stay the proceeding as to those claims. The Court rejected the parties’ arguments regarding the Board’s likelihood of ultimately finding the newly instituted claims unpatentable and the effects of the IPR estoppel. The court reasoned that they “ignor[ed] the reality of this case,” which will “barrel on without those [stayed] claims.” Removing the newly instituted claims will simplify the case with little prejudice to the plaintiff, which was already required to pick just five asserted claims from the four unaffected patents in the proceeding. Huawei Tech. Co. Ltd. v. Samsung Elecs. Co., Ltd., No. 3:16-cv-02787, ECF No. 307 (N.D. Cal. June 13, 2018) (Orrick).

District Court: Another stay in view of PTAB’s post-SAS order. The Court previously denied a stay because the Board instituted IPR of only a non-asserted claim. The case proceeded to trial on the asserted claims (which were all denied review), ultimately resulting in a jury verdict of not invalid and willfully infringed. Post-trial and post-SAS, the Board modified its institution decision to include the asserted claims. The Court issued an order to show cause why the case should not be stayed, and after considering the parties’ responses, stayed the case. Prisua Eng’g Corp. v. Samsung Elecs. Co., No. 1:16-cv-21761, ECF No. 342 (S.D. Fla. June 12, 2018) (Moore).

PTAB: Internet Archive insufficient to prove public accessibility. The Board denied institution because the petitioner failed to prove the public availability of its principal reference, a master’s thesis. The petitioner pointed to an archived page from the university’s website having a link to the thesis and a declaration from the Internet Archive showing that the page was archived before the critical date. This information was insufficient to establish public accessibility because it did not show that the thesis was indexed or catalogued by the university, that the university’s website could be searched to find the thesis, or that the Internet Archive’s captures were indexed, catalogued, or otherwise searchable by subject matter. Adobe Sys. Inc. v. Grecia, IPR2018-00418, Paper No. 7 (PTAB June 21, 2018) (Wormmeester, joined by Lee and Kim).

PTABIn camera review of evidence. The Board authorized the petitioner to file a motion to disqualify the patent owner’s expert, alleging the expert previously signed a non-disclosure agreement and discussed strategies for this IPR with the petitioner. Because the information in support of the motion included attorney work-product information, the Board agreed to review the evidence in camera and instructed the petitioner to file a copy with the work product redacted. Sanofi-Aventis U.S. LLC, et al. v. Immunex Corp., IPR2017-01884, Paper No. 43 (PTAB Jun. 12, 2018).

PTAB: Patent owner not estopped. In an earlier IPR proceeding against the same patent, the patent owner statutorily disclaimed the sole instituted claim, which resulted in an adverse judgment. In this IPR, the petitioner contended that the patent owner is estopped under 37 C.F.R. §42.73(d)(3) from distinguishing the prior art based on limitations in the disclaimed claim. The Board disagreed, noting that the patent owner estoppel applies only to “obtaining” claims, not defending the validity of previously obtained claims. The Board also rejected the petitioner’s reliance on MaxLinear, Inc. v. CF CRESPE, 880 F.3d 1373 (Fed. Cir. 2018)), distinguishing this regulation-based estoppel from the common law doctrine of collateral estoppelGen. Elec. Co. v. United Techs. Corp., IPR2017-00428, Paper No. 38 (June 22, 2018).

Proposed change to IPR/PGR/CBM claim-construction standard.The PTO announced a Notice of Proposed Rulemaking to change the claim-construction standard in AIA proceedings from the broadest reasonable interpretation to the district court’s narrower Phillips standard. Comments are due to by July 9, 2018.

Judicial Conferences in Detroit and Denver. The Patent Trial and Appeal Board will host a 2018 PTAB Annual Judicial Conference at the Midwest Regional Office in Detroit, Michigan on Monday, July 9, 2018 from 9 a.m. to 4:30 p.m. ET in the FDA Training Room. The Board will host its 2018 PTAB Annual Judicial Conference at the Rocky Mountain Regional Office in Denver on Wednesday, July 11, 2018 from 9 a.m. to 4:30 p.m. MT on the 14th floor. For a full listing of the dates, times, and locations of all upcoming Judicial Conferences, please visit the Board’s  2018 PTAB Annual Judicial Conferences page.

PTAB Statistics. The latest ex parte appeal statistics show that the Board continues to whittle away at the backlog. There are currently only 11,823 pending appeals, down from over 25,000 in fiscal year 2014. Also, only 20 interferences are currently pending, compared to a high of 59 in FY 2011.

*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Timothy CaineBenjamin EvansJanna FischerChristopher GeyerArvind JairamWing LiangSandip PatelKrupa ParikhRebecca RabensteinStevan StarkTodd SiegelMikaela Stone, 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.