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September 14, 2016Newsletter

This Week at the Board - September 14, 2016

PTAB Addresses Proper Claim Construction For Patents Expiring Under Inter Partes Review

In IPR2016-00386, the PTAB addressed the proper claim construction standards for expired/expiring and unexpired patents under inter partes review.  The PTAB ordered that a district court-type claim construction is applied to patents expiring during review, while the broadest reasonable construction is applied to unexpiring patents.

The PTAB, relying on the Federal Circuit’s decision in Phillips v. AWH Corp., explained that a district-court type construction—that claim terms are “generally given their ordinary and customary meaning”— is applied to patents expiring during inter partes review. The PTAB also noted that 37 C.F.R. § 42.100(b) now permits “a party . . . to request a district court-type claim construction approach to be applied if a party certifies that the involved patent will expire within 18 months from the entry of the Notice of Filing Date Accorded to Petition.”  Finally, the Board reiterated that unexpiring patents are interpreted using the “broadest reasonable construction in light of the specification of the patent in which the claims appear.”

In so ordering, the PTAB rejected the Petitioner’s urging that the Board apply both the broadest reasonable construction and the district court-type construction to the unexpiring patents at issue.  The PTAB rejected the Petitioner’s position as speculative, unnecessary, and inefficient.

PTAB Grants Patent Owner’s Request to File Sur-Reply in Response to Arguments and Evidence First Raised in Petitioner’s Reply Brief

In IPR2015-01786, the PTAB granted Patent Owner’s request to file a sur-reply to respond to alleged new arguments and evidence presented in Petitioner’s Reply Brief.

The Patent Owner initially requested to strike Petitioner’s Reply Brief and supporting exhibits on the grounds Petitioner improperly raised new arguments, grounds of invalidity, and new evidence in violation of 37 C.F.R. § 42.32(b).  In the alternative, the Patent Owner requested authorization to file a sur-reply.  The Board explained it had discretion to strike or, alternatively, consider a patent owner’s position regarding alleged new arguments.  It rejected Patent Owner’s request to strike, but, recognizing the importance of presenting arguments and evidence supporting invalidity challenges “with particularity” in the original petition, granted Patent Owner an opportunity to respond via sur-reply.  In granting Patent Owner’s request, the PTAB also provided Petitioner an opportunity to respond via sur-sur-reply.

Ultimately, the PTAB declined to make an immediate determination as to whether any of the alleged new arguments and evidence in Petitioner’s Reply was improper under 37 C.F.R. § 42.32(b); any such determination was to be made when writing its final decision.

PTAB Finds That Petitioner Failed to Make a Threshold Showing That Reference Was a Printed Publication

In IPR2016-00582, the Petitioner tried to rely on a reference as prior art, but the PTAB found that the Petitioner had failed to make a threshold showing that the reference was actually a printed publication that was available and accessible to persons concerned with the art to which the document relates.  In particular, the PTAB found that although the reference had some indicia on it, including what appeared to be a Dewey Decimal number, that the Petitioner had still not provided enough evidence that the reference should be considered prior art.  The PTAB noted that the Dewey decimal number may show that at some point the reference was indexed, but it did not indicate the date of indexing or whether it actually was shelved prior to the critical date.  

PTAB Finds That Petitioner Failed to Make a Threshold Showing That Reference Was a Public Sale Under the AIA

In PGR2016-0008, the Petitioner tried to rely on public evidence of a sale as prior art, but the PTAB found that the Petitioner had failed to make a threshold showing that the sale itself was actually a public sale, as required under the AIA.  In particular, the PTAB noted that the facts of the case were similar to Helsinn Healthcare S.A. v. Dr. Reddy’s Labs., Ltd., No. 11-3962, 2016 WO 832089, and agreed with the district court that the on-sale bar inquiry is not focused merely on the public disclosure of the existence of a prior sale or offer for sale.  Rather, the sale itself must make the claimed invention available to the public in order to trigger the on-sale bar.  In this case, the sale was based on licensing agreements that contained strict confidentiality provisions, and was not a public offer for sale as required under the AIA.

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