It was known that the Patent Trial and Appeal Board (“PTAB”) rarely grants a patent owner’s motion to amend claims during inter partes review (IPR) proceedings, and there is no exception in an IPR proceeding involving Veritas Technologies LLC and Veeam Software Corporation (No. IPR2014-00090). In view of the PTAB’s recent denial, Veritas appealed to the Federal Circuit. On August 30, 2016, the Federal Circuit issued its opinion in Veritas Technologies LLC v. Veeam Software Corporation, 120 USPQ2d 1046 (Fed. Cir. 2016) finding the PTAB’s denial of Verita’s motion to amend was “arbitrary and capricious” and vacated the PTAB’s decision. Id. at 1048.
When a particular patent is involved in an inter partes review (IPR) proceeding or other post-grant review proceeding, the USPTO has wide discretion in determining whether to allow an additional proceeding to be instituted or continued. The two governing statutes are 35 U.S.C. §315(d) and 35 U.S.C. §325(d), each of which states that “the Director may determine the manner in which the . . . matter may proceed, including providing for stay, transfer, consolidation, or termination of any such matter.”
In many instances, the Patent Trial and Appeal Board (PTAB) denies institution of a subsequent IPR. In this regard, even when “a petitioner establishes a reasonable likelihood of prevailing with respect to at least one challenged claim,” the PTAB may decide against instituting the subsequent proceeding. Conopco v. Procter & Gamble, IPR 2014-00506, Paper No. 25 at page 4 (Decision Denying Request for Rehearing). Even if a subsequent proceeding regarding a particular patent is requested by a different petitioner, the PTAB has discretion to deny institution for “efficient administration.” See Unified Patents v. PersonalWeb Technologies, IPR 2014-00702, Paper No. 13.
On June 13, 2016, the Patent Trial and Appeal Board (PTAB) entered its first Final Written Decision in a Post Grant Review (PGR) proceeding. The PTAB found that the Petitioner had failed to show unpatentability based on prior art, but the PTAB agreed with the Petitioner that all claims are directed to unpatentable abstract ideas under 35 U.S.C. § 101.
US Patent No. 8,660,88 (the ‘888 patent) is directed to a system, method, and computer-readable medium for evaluating a relative market value of a cattle sale group. In the PGR, the Petitioner relied on two grounds that are not available in an Inter-Parties Review (IPR) proceeding.
The Patent Trial and Appeal Board (“the PTAB”) has a staunch reputation for rarely granting a patent owner’s motion to amend claims during inter partes review proceedings (to date, the Board has only granted six such motions to amend). However, in the matter of Shinn Fu Co. v. Tire Hanger Corp., IPR2015-00208 (decided on April 22, 2016), the PTAB granted The Tire Hanger Corporation’s (“Tire Hanger”) motion to amend the claims of its U.S. Patent No. 6,681,897 (“the ‘897 patent”). The PTAB’s decision allowed Tire Hanger to salvage invalid claims with narrowing claim amendments and provides encouragement to patent owners that more motions to amend may be granted by the PTAB in the future.
The America Invents Act (AIA) provided several mechanisms for reviewing the validity of issued patents. While Inter Partes Review (“IPR”) is commonly used, a review of Covered Business Method (“CBM”) patents is another mechanism for reviewing validity. Moreover, challenging a patent using CBM can be more desirable than in an IPR, since CBM provides the petitioner more bases for review than in an IPR.
Federal Circuit Affirmed: Institutions Decisions Are Not Appealable and Broadest Reasonable Interpretation Is Reasonable
On June 20, 2016, the Supreme Court issued its ruling in Cuozzo Speed Technologies, LLC v. Lee. There were two issues presented in Cuozzo: (1) whether the Board’s institution decision of an IPR is appealable, and (2) whether the broadest reasonable construction standard is appropriate to apply in patent office proceedings. For both of these issues, the Court affirmed the Federal Circuit’s previous ruling.
The outcomes of inter partes review petitions and final written decisions have differed dramatically for claims in pharmaceutical patents, compared to other technologies, particularly for obviousness challenges of claims to chemical compounds. In its final written decisions of Orange Book-listed patents, the Patent Trial and Appeal Board (“PTAB”) has found claims unpatentable 35% of the time, in contrast to a 73% unpatentability rate in final written decisions across all technologies. Likewise, in its institution decisions, the PTAB has granted 70% of petitions for inter partes review, but only 57% of petitions concerning pharmaceutical patents, and only 30% of petitions raising obviousness challenges of chemical compounds.
In Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01506, the Patent Trial and Appeal Board found that testimony of the Patent Owner’s declarant was owed diminished weight due to misstatements in the declarant’s Curriculum Vitae (“CV”). However, despite the reduced weight, the Board nevertheless found that the Patent Owner had a winning claim construction argument as to the meaning of a claimed “graphical symbol.” As a result, the Board determined that the Petitioner failed to establish that any claims of the patent-at-issue were disclosed or made obviousness by the art of record.
Novelty and obviousness are governed by 35 U.S.C. §§ 102 and 103, respectively. Generally speaking, a novel claim is one that has not been previously described or practiced. Similarly, a claim is non-obvious if the claim, as a whole, would not have been obvious to one of ordinary skill before the effective filing of the patent application or, for pre-AIA, invention by the inventor. Anticipation under § 102 requires that all the elements of a claim be found in a single prior art reference. The elements must be either expressly or inherently described in the reference without modification.
On March 31, 2016, in Alarm.com v. Vivint (IPR2015-020004), the Patent Trial and Appeal Board (PTAB or Board) denied institution of an inter partes review (IPR) of claims 1-43 of U.S. Patent No. 6,147,601 (the ‘601 patent). The Petitioner asserted that many of the claims of the ‘601 patent, including every independent claims, were anticipated by a single reference, Scadaware, and that a number of dependent claims were obvious over Scadaware either alone or in combination with other references. In the obviousness assertions, the Petitioner did not revisit the elements of the independent claims, but merely relied upon the anticipation analysis. The PTAB found that Scadaware failed to anticipate each and every element of the independent claims, and thus denied the assertion that the independent claims were not novel. The PTAB further denied institution of the obviousness assertions, finding these deficient by virtue of their reliance on the anticipation analysis.
The Patent Trial and Appeal Board (PTAB) may deny institution of inter partes review (IPR) of claims of a patent if the Petition for IPR repeats the same issues made during prosecution of the patent, even if the Petition uses a prior art reference cited during prosecution to reject only other claims of the patent and uses new secondary references. Additionally, where the newly cited art and arguments are the same or substantially the same as those previously presented to the Office, the PTAB will not reconsider the any evidence of secondary considerations already considered during prior prosecution.
On February 24, 2016, in Ziegman v. Stephens (IPR2015-01860), the PTAB denied institution of IPR of claims 12-15 of U.S. Patent No. 8,881,447 (the ‘447 patent), because the Petitioner presented substantially the same art or arguments as those previously presented to the U.S. Patent and Trademark Office (the Office).