Federal Circuit Appeal on Trade Show Material as Prior Art Highlights Differences Between PTAB and ITC

The different standards between the PTAB and the ITC came to bear in a recent Federal Circuit appeal between Nobel Biocare Services AG and Instradent USA, Inc. (Appeal No. 2017-2256 ). The decision came on an appeal from an IPR where Instradent sought to invalidate Nobel’s patent relating to dental implants with a critical date of May 23, 2003. The original patent holder (Alpha-Bio Tech. Ltd) brought an estimated 200-500 catalogs describing the material to a 2003 trade show, which usually occurred in March and corresponds to the ‘March 2003’ date printed on the catalog cover.

In 2015, the ITC ruled that the testimony from the Patent Owner that the trade show usually occurred in March and the March 2003 date on the catalog was insufficient to establish the available date. In the underlying 2015 IPR, the PTAB, considering new testimony from a competitor corroborating the March 2003 date for the catalog, found sufficient evidence that it was publicly available in March of 2003, before the critical May 23, 2003 date. This allowed the anticipation rejection to stand and invalidated the subject claims. Both decisions were appealed to the Federal Circuit.

The ITC appeal was decided first, where the Federal Circuit upheld the insufficiency of the evidence for the March 2003 catalog, followed by the appeal of the IPR sufficient evidence finding which was also upheld.

In explanation of affirming the two seemingly conflicting decisions, the Federal Circuit highlighted two things. First, the panel pointed to the additional evidence of corroborating testimony from their competitors. Secondly, and more significant for decision making purposes, the panel emphasized that the standards of evidence are different between the ITC and the PTAB. In support of the IPR decision, the panel explained, “As the Board correctly observed, the evidentiary standard in its proceedings, preponderance of the evidence, is different from the higher standard applicable in ITC proceedings, clear and convincing evidence”. The panel then cited to its 1966 decision in Consolo v. Fed. Mar. Comm’n which stated that “the possibility of drawing two inconsistent conclusions from the evidence does not prevent an administrative agency’s finding from being supported by substantial evidence.”

The Federal Circuit’s endorsement that the different standards hold weight in application of prior art eligibility highlights the necessity of proper strategic planning when deciding how to proceed with any patent disputes.


Maier & Maier Reaches 1000th Patent Issued

After over a decade of outstanding service and commitment to our clients, Maier & Maier is proud to have obtained 1000 patent grants for our clients from the United States Patent & Trademark Office. The most recent in a string of successes, this achievement represents both the quality and consistency of Maier & Maier’s work.

The milestone comes during the most successful year to date for Maier & Maier. Nearly 250 grants to date in 2018, repeated successes litigating for our clients, and the addition of new partner and renowned patent expert, Steve Kunin, have all combined to make 2018 the best yet, and helped the firm earn a spot as one of U.S World & News Report’s Best Law Firms.

With continued commitment to our clients, Maier & Maier is looking forward to even greater things for years to come!


Maier & Maier Helps GREE, Inc. Deal Blow to Supercell Oy With Another Non-Institution Decision

On Monday, December 17, 2018, the PTAB denied institution of Supercell Oy’s PGR2018-00066 petition. The challenged patent, U.S. Pat. No. 9,873,044, which discloses a Method for controlling a server device, a server device, a computer-readable recording medium, and a game system. The petition proposed three grounds of rejection (one under §101 and two under §112). The Board found Supercells’ proposed §101 rejection unpersuasive because the petitioner failed to demonstrate that it was more likely than not that at least one of the challenged claims was unpatentable. Supercell’s proposed §112 rejections also failed because the Board found that one of ordinary skill in the art would understand the meaning of “enabling invitations,” “detecting,” and “giving incentives” in light of the specification, and because the Board found the claims to be sufficiently definite under § 112(b).

This petition was filed as part of an ongoing arms race between GREE, Inc. and Supercell Oy in the social gaming technology field, with eighteen PTAB proceedings between the two. Supercell Oy tapped Fenwick & West to challenge 16 of GREE’s patents, and GREE has countered by using Maier & Maier PLLC (4 proceedings), Ropes & Gray (4 proceedings), Kilpatrick Townsend & Stockton LLP (4 proceedings), Oliff PLC (3 proceedings), and Oblon McClelland Maier & Neustadt, LLP (1 proceeding).

Overall more than half of the proceedings have been instituted (9), with four still pending the Board’s institution decision. Out of the sixteen proceedings, GREE has only successfully prevented three of the proceedings from being instituted, with Maier & Maier obtaining two of those Non-Institution Decisions.

Maier & Maier’s 50% non-institution rate dwarfs the rate for both GREE’s overall defense against Supercell’s campaign (25%) and the overall rate for PGR’s at the PTAB, which clocks in at 26.8%.

All the above statistics and information about the individual PTAB proceedings was obtained using the PostGrant Portal.


Iancu: “Much More Work Needs To Be Done” On Section 101

At the 10th Annual Patent Law & Policy Conference late last month, USPTO Director Iancu announced that more USPTO guidance on Section 101 was forthcoming. As he explains, “the USPTO plans to issue guidance to help our examiners and applicants who struggle with these issues every single day”. Throughout his address, he focused on a few primary themes that will likely be reflected in the future guidance and bare taking note of moving forward.

First, he highlighted the importance of gaining clarity on §101 eligibility.  Citing to both historical records from James Madison and recent decisions from several Federal Circuit Judges, Iancu set out his goals for people to be able to understand the laws and predict outcomes. As he notes, “[F]or the IP system to work as intended, we must ensure that our laws are clear and that the IP rights we issue are predictable, reliable, and of high quality.”

Second, he emphasized the need to “keep invalidity rejections in their own lanes”. Lauding the Patent Act of 1952, Iancu praised the separation of rejections for applications as being not novel, as being obvious, or as being indefinite or too broad to be fully enabled, which were clearly laid out as separate in the text of the statute. Per his address, “The genius of the 1952 Patent Act was that it clearly categorized the conditions for patentability, in addition to and separate from the categories of invention.”

Finally, he explains that the judicial exceptions to 101 eligibility should be applied in a limited manner, specifying that “the judicial exceptions should address categories of subject matter that are not eligible per se, or on their own, no matter how inventive or well-claimed they are.” This limits the application of 101 to things that the Supreme Court has declared ineligible even if they satisfy every other requirement perfectly.

In addition to natural phenomena and laws of nature, Iancu identifies three categories of abstract ideas that fall under this umbrella.

“1. Mathematical concepts like mathematical relationships, formulas, and calculations.

2. Certain methods of organizing human interactions, such as fundamental economic practices; commercial and legal interactions; managing relationships or interactions between people; and advertising, marketing, and sales activities.

3. Mental processes, which are concepts performed in the human mind, such as forming an observation, evaluation, judgment, or opinion.”

The current climate of rapid innovation has exacerbated the confusion. “We are all currently grappling with the eligibility of all sorts of technology, from things like toys that communicate with one another, to computer virus screening; from computer databases, to methods of treating various diseases. Now I am not expressing any view as to the ultimate validity of any particular claims drawn to these technologies. Such claims, if they are actually ‘directed to’ math or laws of nature or some other matter that the Supreme Court said is per se ineligible, might perhaps fail under 101.

“But without more, why would such technology be deemed as ineligible by itself? The Supreme Court has never held such technology, by itself, to be prohibited. And why should it be?”

By letting the separate rejections speak for themselves, Iancu hopes to reign in these judicial exceptions and allow for worthy technology to gain protection. As he puts it, “I think that we can overcome the current Section 101 morass if we carefully follow Supreme Court precedent, if we don’t allow the judicial exceptions to swallow the entire statute, and if we allow the rest of the statutes (102, 103, 112) to do the work they were meant to do.”

For the full remarks made by Director Iancu, click here

 


Supreme Court Not Buying Helsinn On-Sale Argument

On Tuesday, December 4, the Supreme Court heard oral arguments in Helsinn Healthcare v. Teva Pharmaceuticals centered around the meaning of the phrase “On-Sale” under the AIA and whether the term was changed from the previous meaning.

Helsinn originally sued Teva for infringement of four patents relating to palonosetron dosages in chemotherapy treatments in the District of New Jersey. While the drug use was in testing and development, Helsinn entered into a License Agreement and a Supply and Purchase Agreement with MGI Pharma, Inc, which was binding as of April 6, 2001. It wasn’t until January 30, 2003 that Helsinn filed a provisional application on the dosage. All four of the patents claim priority to that application, raising the question of whether the Supply & Purchase Agreement constituted the dosages being “On Sale” as Prior Art under §102.

Three of the patents were filed between 2003 and 2006 and are governed under the pre-AIA “On Sale” interpretations, while one of the patents was filed in May of 2013 and is subject to the AIA language. Pre-AIA, patents were invalid if “the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States” under 35 U.S.C. 102. Under the AIA, patents are invalid if “the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. 102(a)(1).

The District Court found the three pre-AIA patents valid because by interpreting the MGI Agreement as a contract for a future sale once the idea was reduced to practice, rather than a sale at the time of enactment. They also found the AIA patent valid by interpreting the new language to require a public sale or offer for sale, while this Agreement was confidential between MGI and Helsinn. On appeal by Teva, the Federal Circuit reversed on all four patents, finding them all invalid due to a prior sale and also that the claims were ready for patenting prior to the critical date. Helsinn appealed.

Helsinn’s first argument was that “on sale” has always required public availability and the Agreement would not be prior art under either pre-AIA or AIA language. This argument centered on the idea that there is ambiguity about the meaning of the phrase “on sale” as to whether it means someone is actively seeking purchasers or merely requires an offer to at least one person. The idea here being that Helsinn’s private sale to MGI might not constitute being “on sale” whereas an open offer to prospective buyers at large would have.

In oral arguments, the justices seemed unconvinced of any such ambiguity. Justice Sotomayor objected to his alternative meaning of the phrase. “This [public] definition of ‘on sale,’ to be frank with you, I’ve looked at the history cited in the briefs, I looked at the cases, I don’t find it anywhere.” Meanwhile, Justice Kavanaugh commented that “it’s pretty hard to say something that has been sold was not on sale”.

Helsinn also argued that the AIA language’s inclusion of “or otherwise available to the public” meant that the preceding list of prior art forms must be ‘available to the public’ as well. This would indicate a new additional requirement from the previous iteration of §102 where the invention must be on sale to the public, eliminating the confidential Agreement as invalidating prior art.

Currently, the only change to the on sale requirement from pre-AIA to AIA was the new eligibility of sales abroad as prior art. Helsinn’s interpretation would change that, but so far the Court does not seem to be buying it.


PTAB Petitions Spike As BRI Era Closes

On October 10, 2018, the USPTO announced it would adopt the Phillips claim construction standard as of November 13, 2018. That means that as of yesterday, any petitions filed are no longer reviewed under the Broadest Reasonable Interpretation (BRI) standard that the PTAB had applied since its creation under the AIA. Instead, they will be reviewed under the Phillips standard for claim construction. For more information about the switch, read our post on the announcement here.

While the potential impacts of the change have been hotly debated, one month out from the announcement, we can be sure of one thing: Petitioners preferred BRI over Phillips. Over the 6 year history of the PTAB, there have been nearly 10 thousand petitions filed-an average of 121 per month, with a high of 237 in January of 2017.

In just 12 days this November, Petitioners filed at least 178 petitions, with a staggering 74+ coming the last day for BRI filings-November 12, 2018. That 178 petitions so far this November would already stand as the 8th highest month on record for filings before reaching the halfway point for the month.

It remains possible that the Phillips era may usher in even more filings in lieu of district court litigation and what impact the shift may have on the current 40% institution rate, but as of now Petitioners have given a final resounding endorsement of BRI.

The above statistics were obtained using the PostGrant Portal Insights feature, where you can find similar statistics and track individual proceedings, along with further searching capabilities.


USPTO Extends AFCP 2.0 Until September 30, 2019

The U.S. Patent Office announced that the After-Final Consideration Pilot 2.0 (AFCP 2.0) will be extended another year. Originally implemented in May 2013, the program allows for amendments and responses for the examiner’s consideration to be submitted after a Final Office Action has been sent. Prior to the implementation, applicants were limited to filing appeals or Requests for Continued Examination, both likely to be more costly options.

Of the thousands of AFCP requests submitted, approximately 25% have resulted in allowance, which, when combined with the usually lower cost of filing compared to alternatives, represents an intriguing option for those facing Final Rejections.[1] More information on the program is available at the PTO website here.


[1] https://blog.juristat.com/2017/7/12/do-afcp-20-requests-actually-work


USPTO ADOPTS PHILLIPS CLAIM CONSTRUCTION

Starting November 13, 2018, all IPR, PGR, and CBM proceedings will conduct their claim construction using the Phillips standard put forth by the Federal Circuit in 2005, turning away from the Broadest Reasonable Interpretation (BRI) standard it currently uses. This brings the PTAB in line with the Federal Courts and the ITC in examination standards.

Under BRI, claims are interpreted using the “broadest reasonable meaning of [a claim’s] words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.”[1] Under the Phillips standard, claims are given a narrower construction as “the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.”[2]

Currently, there are about 150 petitions filed at the PTAB each month, with an institution rate of 40% over the last twelve months (statistics obtained using Insights at PostGrant Portal). It bears watching whether there will be a spike in filings at the PTAB this final month for petitioners who would prefer the BRI standard or a drop-off for those waiting for the new Phillips standard next month.

As Maier & Maier partner, Steve Kunin, explains here, the most significant impacts will not be felt in PTAB proceedings, but in District Court. “Practically speaking in most cases BRI and Phillips claim construction in PTAB AIA proceedings are not materially different; I see the real impact will be in district court proceedings when the patent owner is arguing for a narrow claim construction and can now point to the AIA trials as supporting the position.” Some petitioners may strategically wait for the new standard, as the PTAB construction would be given more deference with the newly aligned standards, and a narrower construction would prove useful in supporting a non-infringement argument.


[1] In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).

[2] Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en banc).


Maier & Maier Partner Stephen G. Kunin Named ‘Best Lawyer’ for 2019

Best Lawyer Magazine has named it’s 2019 Best Lawyers in Washington, D.C., including Maier & Maier’s Stephen G. Kunin among its Intellectual Property Law recognitions.

Mr. Kunin’s illustrious career includes more than three decades at the United States Patent Office, spending one of those decades as the Deputy Commissioner for Patent Examination Policy, and 13 years of private practice counseling clients and testifying as an expert in patent litigation cases. His work has earned him many notable awards including the Meritorious Executive Presidential Rank Award, The Vice President’s Reinventing Government Hammer Award, multiple Gold, Silver and Bronze Medals from the Department of Commerce, and a Career Achievement Award from the USPTO.

Mr. Kunin’s work has continued at Maier and Maier, where he provides opinions and expert testimony on all areas of patent law. His areas of expertise include post-issuance proceedings at the United States Patent Office, complex patent prosecution matters, patent litigation strategy, and United States Patent Office patent policy, practice and procedure.

This recognition from Best Lawyers for his continued work in IP comes after he was named one of Intellectual Property Today’s most influential people in IP law an “IP Star” by Managing Intellectual Property last May. The 2019 Best Lawyer recognition can be found here, while more information about Mr. Kunin and his practice at Maier & Maier is available here.


USPTO Addresses Expanded PTAB Panels With New Standard Operating Procedures

The USPTO’s Patent Trial and Appeal Board (“PTAB”) has issued two revisions to the Standard Operating Procedures with the stated goal of “increasing transparency, predictability, and reliability across the USPTO”.

The first, SOP 1, aims to provide clarity and certainty to the PTAB practice of expanded panels, which has come under criticism in recent years as “panel stacking”. The concern is over the possibility of the PTAB making strategic additions to Board Panels and targeting rehearing proceedings to sway the composition towards a desired outcome, which was even discussed amidst the recent Oil States proceedings in the Supreme Court.

In response to these concerns, the new procedures provide two key provisions: 1. a notice requirement and 2. a specific procedure for expanded panels.

Under the previous practice, the parties might not find out that there was an expanded panel until the decision was issued as there was no requirement to notify the parties. Not so anymore as SOP1 provides that the parties will be notified that the panel will be expanded and identify the Administrative Patent Judges who will be included on the expanded panel.

The updated procedures identify five parties who may suggest an expanded panel: Board members, patent applicants, petitioners, patent owners, and the Patent Business Unit. The Board members in the case submit their requests (or the requests they receive from one of the other eligible parties) along with reasoning (in the form of a  brief for an applicant’s, petitioner’s, or patent owner’s request) in the form of an email to PTABExpandedPanelRequest@uspto.gov. This account will be monitored and requests will be periodically brought to the Chief Judge for recommendation, and the Director for final approval.

It remains to be seen if these new procedures will do enough to curtail the concerns about the practice.

The second update, SOP2, creates a Precedential Opinion Panel (POP) at the PTAB which will “decide issues of exceptional importance” with “binding agency authority”. The POP will be composed of “Director, the Deputy Director, the Commissioner for Patents, the Commissioner for Trademarks, and the administrative patent judges.” The POP will review nominated routine decisions made by panels to designate them as precedential or informative as outlined in detail in the updated SOP. Anyone may nominate a decision to be precedential, and all nominations will be reviewed by a Screening committee before being presented to the POP.

The entirety of the PTAB’s Standard Operating Procedure and any updates thereto are available here.