The Current Roundup

Don’t forget to register: The PTAB Bar Association’s webinar on appeals from the PTAB is next Tuesday, August 1, 2017, at 3:00 PM EDT. The panel will cover PTAB Federal Circuit appeal statistics, lessons learned, and new and emerging issues, including recent and pending Federal Circuit and Supreme Court cases that might affect our practice, such as Oil States v. Greene’s Energy, SAS Institute v. Lee, and Knowles v. Matal.

Christopher Suarez (Williams & Connolly LLP) will be the moderator, and the panelists are Andrew Trask (Google), Pervin Taleyarkhan (Whirlpool), and Rachel Elsby (Akin Gump). CLE credit for IL, NY, CA, and VA is pending.

Please register at this link. Registration will close on July 31, 2017.

CAFC: Reexamination procedure and a means-plus-function error: In an appeal of an inter partes reexamination that included two rounds of examination and two trips to the Board, the Court affirmed that the Board may consider new prior art not raised until after the first trip to the Board, when the patent owner re-opened prosecution and amended certain patent claims (including some that were not appealed the first time). The Court also vacated-in-part, however, because the Board erred in construing a means-plus-function term. The Board rejected the patent owner’s proposed algorithm, but did not inquire further into what algorithm (if any) the specification actually disclosed as corresponding to the recited function. IPCom GmbH & Co. v. HTC Corp., No. 2016-1474 (Jul. 7, 2017) (Chen, joined by Prost and Clevenger).

District Court: Prosecution counsel’s IPR declaration waives privilege: Seeking to antedate a reference in an IPR, the patent owner submitted a declaration from patent prosecution counsel as supporting evidence of the date of conception and subsequent diligence towards a constructive reduction to practice. The attorney’s declaration did not merely date certain documents or identify when meetings occurred. Instead, the testifying attorney offered his conclusions regarding conception date and diligence, and discussed in detail the meetings, notes, and other details that supported his conclusions. As a result, the district court concluded that the attorney-client privilege was waived as to that subject matter, and compelled production of documents containing or describing communications regarding the meetings with the named inventors and the preparation of the patent applications. Milwaukee Elec. Tool Corp. v. Chevron N.A., Inc., No. 14-CV-1289, ECF No. 195 (E.D. Wisc. July 10, 2017) (Stadtmueller).

District Court: PTAB finding of unpatentability does not warrant attorney fees: The defendant contended that the case was exceptional because the Board found the claims unpatentable and the plaintiff maintained an “aggressive litigation stance while the IPR was pending.” The district court disagreed, stating the defendant’s contention “almost seems ludicrous.” Patentees routinely litigate validity despite defendants’ invalidity challenges, and the defendants filed “every motion on the docket,” which otherwise reflected “a modicum of routine discovery skirmishes that occur in nearly every patent case.” Stephenson v. Game Show Network, LLC, No. 12-614, ECF No. 83 (D. Del. July 11, 2017) (Robinson).

PTAB: Briefing and deposition on non-instituted ground after Final Written Decision: Addressing alternative claim constructions, the petitioner originally proposed three grounds: all claims obvious over the Rabinovich reference under a narrow construction, all but three dependent claims anticipated by Rabinovich under a broader construction, and those three dependent claims obvious over Rabinovich under the broader construction. The Board adopted the broader construction, but instituted on the first two grounds only, finding the third moot. The patent owner concentrated on the independent claims in its response and did not separately argue the dependent claims. In its final written decision, the Board found that the claims were not obvious over Rabinovich as set forth in the first ground, which had relied on teachings addressing the narrower construction. The Board agreed with the petitioner on the second ground, however, finding that all claims but those three dependent claims were anticipated by Rabinovich under the broader construction, which it had adopted. In response to the petitioner’s request for rehearing of the obviousness of the three dependent claims, the Board authorized the patent owner to file a brief addressing them supported by new evidence including a deposition of the petitioner’s expert. It also authorized the petitioner to file a reply., Inc. v. AC Techs. S.A., IPR2015-01802, Paper 36 (July 11, 2017) (Clements, joined by Zecher and Abraham).

PTAB: Rehearing of Institution Decision: The petitioner originally contended that the patent-at-issue’s priority chain was broken at an intermediate application that failed to properly claim priority to the earliest-filed application. While the petition was pending, however, a parallel ex parte reexamination concluded and the Office issued a Reexamination Certificate with the complete priority claim. The Board initially denied institution, reasoning that the petitioner “has taken no steps to explain or respond to the effect” of the ex parte reexamination. The Board determined on rehearing, however, that its institution decision “gave insufficient consideration” to the arguments in the petition. The Board concluded that the priority claim was in fact defective and instituted review. The Board also noted the patent owner’s separate petition asking the Office to accept its delayed priority-claim correction was still pending, but stated that it would not affect its decision to institute. Blue Coat Systems, Inc. v. Finjan, Inc., IPR2016-01444, Paper 11 (July 18, 2017) (Boucher, joined by Yang, Arpin concurring).

PTAB: Motion to amend granted on remand: The Federal Circuit vacated the Board’s original decision denying the patent owner’s motion to amend two claims, holding that the Board erred by “insist[ing] that the patent owner discuss whether each newly added feature was separately known in the prior art.” Veritas Techs. v. Veeam Software Corp., 835 F.3d 1406, 1414 (Fed. Cir. 2016). On remand, the Board allowed the patent owner to “supplement” its original motion to amend by adding a “non-transitory” limitation to its already amended computer-readable medium claim (to overcome petitioner’s § 101 arguments in its original opposition), despite petitioner’s objections that a second amendment is not allowed and that the amendment was not in response to an instituted ground. The Board also found the amended claim patentable over the prior art and petitioner’s § 112 arguments. As for the other substitute claim, the Board again denied the patent owner’s motion to amend, this time for lack of written description support. Veeam Software Corp. v. Veritas Techs., LLC, IPR2014-00090, Paper No. 48 (July 17, 2017) (Saindon, joined by Gianetti and Ward).

PTAB Statistics: The Board posted its new AIA Trial Statistics, reporting that the institution rate has continued to decrease and now stands at just 64%, down from a high of 87% in FY 2013. Petitioners have had especially poor results when challenging design patents, achieving an institution rate of only 42%. The Board’s new Appeal and Interference Statistics are also available. They show that the Board has continued its successful assault on the backlog: there are now only 14,092 pending appeals, down from well over 25,000 as recently as FY 2014.

*Contributors: Jonathan Strang (ed.), Thomas Donovan, Kevin McNish, Fahd Patel, Steven Peters, Todd Siegel, Dan Smith, Kenneth Weatherwax, Ben Evans, John Holley, Arvind Jairam, Thomas King, Thomas Pasternak, Rebecca Rabenstein, Diva Ranade, Surenda (Kumar) Ravula, David Roadcap, and Jocelyn Yu. 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.