1. PTAB Bar Association Conference—March 2, 2017
PTAB Trends and Hot Topics
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2. Overview Trends At the PTAB, in general: Trend related to volume
Trend related to outcome
Trend affecting outcome
On appeals:
Affirmance vs Remand/Reversal
Remand v Reversal
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3. Trends at the PTAB: Volume
District Court patent filings down 26% in 2016; PTAB filings down only 2%
*2/27/2017; Source: DocketNavigator Analytics
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4. Trends at the PTAB: Outcome
2016 (570 FWDs)
2015 (436 FWDs)
*2/27/2017; Source: LexMachina
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5. PTAB Institution Decision Success Rates
Impact of Patent Owner Submissions of Testimonial Evidence with Preliminary Response on Institution Decisions
PTAB Institution Decision Success Rates
(Institution Decisions Issued and POPRs Filed 5/2/2016 – 2/22/2017)
No challenged claims instituted
Only some challenged claims instituted
All challenged claims instituted
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6. Trends on Appeals: Outcome
Source: DocketNavigator, as of 1/10/2017
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7. Trends on Appeals: Outcome (2016)
Source: Law360, 2016
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8. Overview Hot Topics Estoppel CBM Eligibility
A recent decision seems to have extended the outcome of Shaw with respect to 315(e). See Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., C.A. No SLR, Memo. Op. at (D. Del. Dec. 19, 2016)
CBM Eligibility
The “financial” prong of CBM eligibility was non-limiting, until Unwired Planet changed the legal landscape. Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016).
Full and Fair Opportunity To Respond
A recent case raises questions with respect to permissible and impermissible introduction of evidence during the course of trial. See Genzyme Therapeutic Products v. Biomarin Pharmaceutical, (Fed. Cir. Jun. 14, 2016)
Sovereign Immunity
Government entities may be entitled to a sovereign immunity defense to the institution of an inter partes review. See Covidien LP v. Univ. of Florida Research Foundation Inc., IPR Paper 21 (PTAB Jan. 25, 2017).
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9. Hot Topic: Estoppel
35 U.S.C. § 315(e)(2): “[t]he petitioner in an inter partes review … that results in a final written decision under section ... may not assert[] in a civil action ... that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.”
Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., C.A. No SLR, Memo. Op. at (D. Del. Dec. 19, 2016)
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10. Hot Topic: Estoppel
Intellectual Ventures I LLC, et al. v. Toshiba Corp., et al., C.A. No SLR, Memo. Op. at (D. Del. Dec. 19, 2016)
“the Federal Circuit has construed the above language quite literally[, finding in Shaw that] ... because the PTAB rejected a certain invalidity ground proposed by the IPR petitioner, no IPR was instituted on that ground and, therefore, petitioner ‘did not raise – nor could it have reasonably raised – the [rejected] ground during the IPR.’” Toshiba at 26 (citing Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016))
“[a]lthough extending the above logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding, the court cannot divine a reasoned way around the Federal Circuit’s interpretation.” Id.
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11. Hot Topic: CBM Eligibility
AIA § 18(d)(1): “the term ‘covered business method patent’ means a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions” (emphasis added).
Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016).
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12. Hot Topic: CBM Eligibility
Unwired Planet, LLC v. Google Inc., 841 F.3d 1376 (Fed. Cir. 2016).
“it cannot be the case that a patent covering a method and corresponding apparatuses becomes a CBM patent because its practice could involve a potential sale of a good or service. All patents, at some level, relate to potential sale of a good or service.” Id. at 1382.
“We hold that the Board's reliance on whether the patent claims activities ‘incidental to’ or ‘complementary to’ a financial activity as the legal standard to determine whether a patent is a CBM patent was not in accordance with law.” Id.
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13. Hot Topic: Full and Fair Opportunity To Respond
Genzyme Therapeutic Products v. Biomarin Pharmaceutical, (Fed. Cir. Jun. 14, 2016).
“The principal thrust of Genzyme’s APA challenge is that the Board cited references in its final written decisions that were not specifically included in the combinations of prior art on which the Board instituted review.” Id. at *8-9.
“However, the introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings and, as long as the opposing party is given notice of the evidence and an opportunity to respond to it, the introduction of such evidence is perfectly permissible under the APA.” Id. at *9.
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14. Hot Topic: Sovereign Immunity
Covidien LP v. Univ. of Florida Research Foundation Inc., IPR Paper 21 (PTAB Jan. 25, 2017).
“we determine that Patent Owner UFRF, as an arm of the State of Florida, is entitled to a sovereign immunity defense to the institution of an inter partes review of the challenged patent. Further, we dismiss Petitioner’s Petitions in IPR , , and because UFRF has successfully raised this defense in these proceedings.” Id. at 3.
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15. PTAB Bar Association Conference—March 2, 2017
Thank you!
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