March 9, 2016Newsletter

This Week at the Board - March 9, 2016

Ethicon Endo-Surgery Files Petition for Rehearing at the Federal Circuit, Arguing the PTAB Does Not Have the Authority to Make IPR Institution Decisions

In a petition for rehearing filed with the Federal Circuit on February 29, 2016, Ethicon has challenged the PTAB’s authority to institute an IPR on the grounds that 35 U.S.C. § 314(a) explicitly grants institution authority to the Director of the PTO, while only granting the PTAB the authority to deliver a final written decision. Ethicon argues that the PTAB’s involvement in both the institution phase and final written decision impinges upon constitutional due process rights because the PTAB judges are biased by their own decision to institute an IPR. In a previous split decision, a three judge panel at the Federal Circuit affirmed the PTAB’s authority to both institute an IPR and issue a final written decision, noting that the Director has delegated the institution power to the PTAB. However, in a dissenting opinion, Circuit Judge Newman supported Ethicon’s due process arguments and the division of responsibility set forth in the Patent Act.

Federal Circuit Finds that Decision to Institute on Only Some Redundant Grounds in an IPR Petition is Not Reviewable

In a recent Federal Circuit decision (Harmonic Inc. v Avid Technology Inc., No. 2015-1072, slip op. (Fed. Cir. [March 1, 2016])), the Federal Circuit has again decided that it does not have the authority to review decisions made by the PTAB at the institution stage. In this case, the Petitioner (Harmonic, Inc.) filed an IPR Petition. The Board instituted the IPR on only a subset of the grounds in the Petition while stating that other grounds were redundant. The Board ultimately found a number of the challenged claims to be patentable over the instituted grounds. The Petitioner appealed, arguing that the Board’s decision to not consider the other redundant grounds for the challenged claims was improper. The Petitioner argued that the Board’s decision was not an institution decision, but rather a case management decision, thereby reviewable by the Federal Circuit. The Federal Circuit disagreed and found that it did not have jurisdiction to review the Board’s decision, noting that the Board’s decision to institute on only a subset of the grounds identified in the Petition was simply a combination of the decision to institute and the decision to deny institution, both of which are not reviewable under the Federal Circuit’s prior precedents.

A link to the PTAB’s decision is provided here.

Amicus Briefs Filed with U.S. Supreme Court in Cuozzo Case Reflect Industry Concern Over Claim Construction and Judicial Review of an IPR

Companies and industries have lined up recently to file amicus briefs with the U.S. Supreme Court, providing their opinions regarding two core issues relevant to an IPR: 1) whether the PTAB should be applying the Broadest Reasonable Interpretation standard in an IPR; and 2) whether certain decisions made by the PTAB in an IPR are insulated from judicial review. Numerous companies, both large and small, as well as companies from a variety of industries, have weighed in on the claim construction issue, arguing that the Broadest Reasonable Interpretation standard is not the correct standard and that a more strict standard should be employed. Such companies and industries in support of the stricter standard include, for example, 3M, Interdigital, Inc. and the Biotechnology Innovation Organization (BIO). Medtronic has also filed an amicus brief, with arguments relevant to the second issue in Cuozzo. Specifically, Medtronic has argued that the U.S. Supreme Court should not suggest that the Federal Circuit lacks appellate jurisdiction over final, post-institution PTAB rulings that terminate IPR proceedings without addressing patentability, since Medtronic was recently involved in an IPR that was terminated in this manner.

A link to the PTAB’s decision is provided here.
PTAB Does Not Consider Poster at Poster Session to Be a Printed Publication

In an IPR on February 26, 2016, the Petitioner tried to rely on a poster as a “printed publication” to invalidate certain challenged claims. The poster had been presented at a poster session conducted at the University of Washington. However, the PTAB noted the Petitioner had failed to explain how those that were invited and attended the poster session were actually interested persons of ordinary skill in the art. Rather, there was evidence that the attendees were merely relatives or people closely tied to those presenting (e.g., mentors, friends, family members). The PTAB noted that the three hour display of the poster at the poster session was different than that of a display at a trade show and thus did not consider the poster to be a printed publication.

A link to the PTAB’s decision is provided here.

Lack of Evidence Dooms Ground Based on Lack of Written Description and Disqualifies Reference as Prior Art

In Blue Calypso LLC v. Groupon Inc., Nos. 2015-1391, slip op. (Fed. Cir. Mar. 1, 2016), the Federal Circuit reversed the Board’s finding that certain claims were unpatentable for lack of written description. The Federal Circuit noted that the Board had acknowledged the specification need not explicitly use the terms or otherwise describe exactly the subject matter claimed. The Board concluded, however, that the petitioner had provided the most persuasive evidence, namely, that the specification did not recite the terms used in the claims. The Federal Circuit was “troubled by the fact that the Board did not cite any evidence other than the fact that the terms were not present in the specification to support its finding.”

The Federal Circuit affirmed the Board’s finding that the petitioner had failed to prove a reference was a printed publication because there was no evidence the document had been disseminated publicly before the critical date. The reference at issue was a paper posted by a graduate student on her personal website. The Federal Circuit concluded that the petitioner’s expert’s conclusory testimony that the paper was publicly available before the critical date was insufficient. The court also noted the record was devoid of any evidence that a query in a search engine before the critical date would have led to the paper appearing in the search results.

A link to the Federal Circuit’s decision is provided here.

PTAB Suspends Rule Requiring Party to File Objections to Evidence

In CBM2015-00105 on March 1, 2016, the PTAB invokes its authority under Rule 42.5(b) to exercise its discretion to suspend Rule 42.64(b). The petitioner requested a conference call to strike or expunge patent owner’s motion to exclude evidence because patent owner had failed to file timely objections as required under Rule 42.64(b). The patent owner acknowledged that it had not complied with the rule. The patent owner further argued that petitioner would have had to incur the cost of responding to the motion if patent owner had filed timely objections, so there is no prejudice in having to respond to the motion. The Board waived the requirements of Rule 42.64(b) in the interests of justice and ordered that the petitioner may respond to the motion. The Board also ordered the patent owner to pay the reasonable costs of any re-deposition of the witness who submitted a declaration in support of the motion to exclude evidence.

A link to the PTAB’s decision is provided here.


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