PTAB Roundup

CAFC: Printed publication case revised.The Federal Circuit reissued its July 27 opinion (reported in the August 10, 2018 Roundup) that vacated the Board’s conclusion that a catalog was not a prior art printed publication. In coming to the same result, the Court explained that the catalog does not need to be made directly available to a skilled artisan. Rather, the question is whether interested members of the relevant public exercising reasonable diligence could access the catalog. GoPro, Inc. V. Contour IP Holding LLC, Nos. 2017-1894, 2017-1936 (Fed. Cir. Nov. 1, 2018) (panel reh’g) (Reyna, joined by Wallach and Hughes)

District Court: No estoppel for IPR win while rehearing is pending. The plaintiff sought to estop the petitioner/defendants from asserting invalidity in district court on the same grounds that it prevailed on in its IPR while the plaintiff’s request for rehearing of the IPR decision was still pending. The court ruled that the IPR estoppel did not apply for two reasons. First, although the statute could be read as plaintiffs suggested, Congress did not intend to estop a petitioner/defendant after it prevailed at the PTAB. Second, the IPR decision is not sufficiently final so long as the plaintiff’s request for rehearing is pending. BTG Int’l Ltd. v. Amneal Pharms. LLC, Case No. 2:15-cv-05909, ECF No. 571 (D.N.J. Oct. 31, 2018) (McNulty). .

PTAB: Routine business practices help establish publication. The Board held that a product sheet was a prior-art printed publication. Relying on a fact witness’s testimony regarding his company’s routine business practices, the petitioner contended the product sheet was made available with demos and samples before the first actual sales and with the sold products thereafter. The patent owner responded that the sheet stated that certain patents had been “secured,” but those patents did not issue until after the relevant date—contradicting the witness’s testimony. The Board disagreed. That statement was not written by a lawyer and the Office had issued notices of allowance by that time. The witness’s business-practice testimony, corroborated with an invoice for the first sale, was therefore sufficient to establish publication. Tech. Consumer Products, Inc. v. Lighting Sci. Grp. Corp., IPR2017-01285, Paper 33 (Oct. 31, 2018) (Turner, joined by Boucher and Hudalla).

PTAB: Five IPR petitions filed on the same day. All on the same day, the petitioner filed five IPR petitions challenging the same claims of the same patent on 14 different grounds. The patent owner asked the Board to exercise its statutory discretion under § 314(d) to deny the petition. The Board declined to do so and instead instituted review. The Board reasoned that the five separate petitions would not waste Board resources because there are similarities between the grounds. The Board further noted that the petitioner will be faced with the IPR estoppel set forth in §315(e), preventing it from arguing in district court that the claims are invalid “on any ground that the petitioner raised or reasonably could have raised during that inter partes review.” (emphasis added by the Board). The Board also declined to exercise its discretion to deny institution under §325(d). Even if the grounds are substantially the same, they were presented simultaneously to the Office rather than “previously” as required by the statute. Intex Recreation Corp. v. Team Worldwide Corp., IPR2018-00873, Paper 14 (Oct. 29, 2018) (Jeschke, joined by Bunting and Mayberry).

PTAB: Legal expert testimony? The Board granted the petitioner leave to file a motion to disqualify an expert and strike his testimony regarding the FDA’s regulatory regime. The petitioner contended on the conference call that such testimony is impermissible because it is legal argument. Nestle Healthcare Nutrition, Inc. v. Steuben Foods, Inc., IPR2015-00259, Paper 107 and Ex. 1041 (October 29, 2018) (Kauffman, joined by Bunting).

Proposed procedure for motions to amend. The USPTO published a Request for Comments (RFC) on a new procedure for motions to amend in IPRs, PGRs, and CBMs. The proposal provides an all-new timeline: the patent owner will file a motion to amend at the six-week point, the petitioner has six weeks to respond, and then the Board delivers a preliminary non-binding decision. After that, the patent owner may reply or file a revised motion to amend addressing issues raised in the Board’s preliminary decision, and petitioner may file a surreply or opposition to the revised motion, as appropriate. For more details, see the PTAB’s announcement. Written comments are due by December 14, 2018.



*Contributors: Jonathan Strang (EIC), Kevin McNish (Ed.), Kenneth Weatherwax (Ed.), Lori Gordon (Ed.), Janna Fischer, Jason Heidemann, Krupa Parikh, Sandip PatelRebecca Rabenstein, David Roadcap, and James Stein. 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.