The Current Roundup

PTAB Bar Association Event in Denver, Colorado: Please join us on April 25, 2017, at the USPTO Rocky Mountain Regional Office in Denver, Colorado for our inaugural regional event and reception. The PTAB Bar Association is honored to partner with the USPTO Rocky Mountain Regional Office to offer an introduction, discussion, and inside look at both the PTAB Bar Association and the USPTO Rocky Mountain Regional Office. The agenda for our event is posted here. Please register at this link by April 21, 2017.

CAFC: Same claims, different record, different standard, different conclusion: The Federal Circuit affirmed the PTAB’s determination that challenged claims were unpatentable for obviousness, even though those claims had survived obviousness challenges in district court and one of those district court cases was affirmed on appeal. The Court explained that the PTAB is not bound by the district court determinations because the records before each tribunal were different. But even if the records were the same, the Court continued, the PTAB would not be bound because the burden of proof in an IPR (preponderance of the evidence) is different than that in district court (clear and convincing evidence). Novartis AG v. Noven Pharm., Inc., No. 2016-1678, 2016-1679 (Apr. 4, 2017) (Wallach, joined by Prost and Stoll).

CAFC: Nexus to the merits of the claimed invention required: The Federal Circuit affirmed the PTAB’s determination that challenged claims were unpatentable for obviousness, rejecting the patent owner’s argument that the Board had misapplied the nexus requirement when assessing the objective indicia of nonobviousness. The Court explained that “the identified objective indicia must be directed to what was not known in the prior art—including patents and publications—which may well be the novel combination or arrangement of known individual elements.” Novartis AG v. Torrent Pharm. Ltd., No. 2016-1352 (Apr. 12, 2017) (Chen, joined by Taranto and Stoll).

District Court: Denied stay pending institution of IPRs: Although extensive discovery “loom[ed] on the horizon,” the Court denied the defendant’s motion to stay pending the IPRs because the Court also issued on that same day its claim construction order invalidating some claims as indefinite, the Board had not yet decided whether to institute the IPRs, the defendant had waited nearly its full year before filing its IPRs, and the parties were direct competitors. Int’l Test Sols., Inc. v. Mipox Int’l Corp., No. 16-cv-00791-RS, ECF No. 112 (N.D. Cal. April 10, 2017) (Seeborg).

District Court: No take-backs of email settlement agreement: After offer and acceptance of settlement terms via email, the parties were preparing a formal written settlement agreement containing the agreed-upon terms. On the day the plaintiff sent a defendant a signed copy of the agreement for that defendant’s signature, the PTAB instituted IPR on one of the patents-in-suit. That defendant tried to back out of the agreement, asserting that circumstances materially changed when the Board instituted the IPR. The Court granted the plaintiff’s request for emergency relief, finding that the plaintiff and that defendant had already entered into a binding settlement agreement via the email exchange, even though that defendant did not sign the formal document. Neurovision Med. Prods., Inc. v. Medtronic Pub. Ltd. Co., No. 2:16-CV-00127-JRG-RSP, ECF No. 109 (E.D. Tex. April 4, 2017) (Payne).

PTAB: Third time is not the charm: The Board denied a petitioner’s third IPR petition challenging the same patent because the petitioner’s “strategy of morphing its challenges over multiple petitions based on the Board’s feedback” was unfair to the patent owner. The Board exercised its discretion to deny any petition under §314(a), rather than §325(d)’s “same or substantially the same prior art” provision, and did not address the substance of the petition. In denying institution, the Board weighed five factors: (1) the same petitioner challenged the same claims of the same patent multiple times; (2) the petitioner knew of the later-asserted prior art at the time of the first petition; (3) the petitioner was already in receipt of a previous Board decision when filing the latest petition; (4) the length of time that had elapsed; and (5) the lack of an adequate explanation as to why the Board should permit another attack on the same claims of the same patent. Xactware Sols, Inc., v. Eagle View Tech., Inc., IPR2017-00021, Paper No. 9 (PTAB April 14, 2017) (Moore, joined by White and Baer).

PTAB: Despite “light most favorable” standard, PO’s expert testimony saves patent’s priority chain: A patent is eligible for PGR if it issued with, or its application ever included, a claim not entitled to a pre-AIA priority date. Seeking to challenge a bicycle chainring patent in a PGR, the petitioner attempted to break the priority chain (and thus establish PGR eligibility) by showing that an originally filed claim (that was canceled during prosecution) lacked written description support and was not enabled. The Board acknowledged that it views competing expert testimony in the “light most favorable to the petitioner” when deciding whether to institute. Nonetheless, the Board agreed with the patent owner and its expert that bicycle chainrings and chains are a predictable art, and that the inventor possessed and enabled the finite bounds of the claimed genus despite fully describing only one embodiment. Fox Factory, Inc. v. SRAM, LLC, PGR2016-00043, Paper No. 9 (PTAB Apr. 3, 2017) (Cherry, joined by Kim and Ippolito).

PTAB: Disclaiming claims to avoid CBM review: The Board held that whether a patent is eligible for CBM review is determined at the time of institution, not filing. Thus, when deciding whether to institute, the Board treated the claims that were disclaimed after the CBM petition was filed as if those claims never existed. Looking only at the remaining claims and applying the recent Federal Circuit decisions Secure Axcess and Unwired Planet, the Board concluded that the patent was not eligible for CBM review because any financial activity was optional and not required by the remaining claims. Facebook, Inc. v. Skky, LLC, CBM2017-00002, Paper No. 11 (PTAB April 12, 2017) (Saindon, joined by Easthom and Paulraj).

PTAB: Board cuts through saw petition: In related decisions, the Board denied institution of an obviousness ground because the petitioner failed to demonstrate that an owner’s manual for a 1973 Sears Craftsman power saw taught certain features or why and how an ordinary artisan would have combined those teachings with another power saw disclosure to arrive at the claimed invention. Also, although the earlier-filed ITC proceeding did not trigger the one-year bar, the petitioner failed to address persuasive objective evidence of nonobviousness that it knew of because it was presented to the ITC. Robert Bosch Tool Corp. v. SD3, LLC, IPR2016-01753 and IPR2016-01755, Paper No. 15 (PTAB March 31, 2017) (Daniels, joined by Jung and Kinder.

PTAB Reform Initiative: The USPTO announced a procedural reform initiative to use nearly five years of historical data and user experiences to improve Patent Trial and Appeal Board (PTAB) trial proceedings. This initiative will examine procedures including, but not limited to, procedures relating to multiple petitions, motions to amend, claim construction, and decisions to institute. Members of the public may submit their ideas regarding PTAB procedural reform to

*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.