June 12, 2019

Issue Sixteen: PTAB Trial Tracker

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB, district court, and Federal Circuit decisions relating to emerging post-grant issues.

Final Written Decision May Not Be “Final”

In Apotex Inc. v. Amgen Inc., IPR2016-01542, Paper 67 (May 20, 2019), the Board sua sponte amended its prior final written decision. After the Board issued a final written decision holding all but one of the challenged claims unpatentable, Petitioner filed a request for rehearing alleging the Board adopted an erroneous construction of a key term in the surviving claim. The Board rejected the request, finding that Petitioner had failed to raise its proposed construction earlier in the proceeding. The Board noted, however, that it agreed with Petitioner that it had overlooked a definition in the challenged patent’s specification for the key term and requested additional briefing from the parties on the proper construction of the term. After briefing was complete, the Board entered a decision amending the final written decision to find all claims unpatentable.

TAKEAWAY:;Even if the Board denies a request for rehearing, it may rely on the arguments raised to sua sponte amend a previous decision, or request additional briefing, “to ensure the decision is legally accurate and each party has had adequate opportunity to provide input.” A party should not hesitate to include persuasive arguments in a request for rehearing, even if those arguments were not previously highlighted in the proceeding.

Further coverage of this decision may be found here on Goodwin’s Big Molecule Watch blog.

Scope of Stay of District Court Litigation Tied to Scope of Estoppel

In Realtime Adaptive Streaming LLC v. Adobe Systems Inc., No. 18-9344 (C.D. Cal. May 14, 2019) (Order), the district court denied Adobe’s request to stay the litigation pending resolution of several IPR proceedings, including Adobe’s IPR challenging one of the patents asserted in litigation, and third party IPRs challenging five of the seven patents asserted in litigation. Adobe agreed to “a more limited estoppel for the third-party IPRs” but did not agree to be bound by the full scope of statutory estoppel for those IPRs.

In denying the motion, the district court noted the early stage of the litigation, but refused to grant a stay. The district court noted that Adobe’s refusal to be bound by the full statutory estoppel of the third-party IPRs and Adobe’s decision not to join the third party IPRs made it unlikely that a stay would simplify the issues and increased the likelihood of delay in the litigation.

TAKEAWAY: While a final written decision invalidating claims may simplify issues in a parallel district court litigation, district courts may be wary to grant a request for a stay where simplification is not guaranteed. Since PTAB proceedings were designed to provide for an efficient, cost-effective method of challenging patents, patent challengers in similar situations should consider whether the potential value of staying a district court action is worth the cost of agreeing to a broader estoppel than would attach under statute.

Amicus Briefs in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039

As discussed in Issue 14, the Board’s POP panel agreed to review the Board’s decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, and asked: What is required for a petitioner to establish that an asserted reference qualifies as “printed publication” at the institution stage?

Numerous tech companies along with intellectual property stakeholders, including the American Intellectual Property Law Association (the “AIPLA”), Cannon, Inc., Unified Patents Inc., Sandoz Inc., and the group of Google LLC, Microsoft Corp., Arista Networks, and Uber Technologies, Inc. (collectively “Google et al.”), filed a total of five amicus briefs. The key arguments from each of the briefs are summarized below.

AIPLA argued that the statutory threshold for the public accessibility requirement should be consistent with the standards for institution. That is, the standard for establishing public accessibility in an IPR should be “a reasonable likelihood,” where the standard in a PGR or CBM should be “more likely than not.” AIPLA went on to argue that, at the institution stage, the Board should resolve evidentiary issues regarding the facts establishing a reference to be a printed publication in favor of the Petitioner, and the Board’s analysis of these issues should wait until it has the benefit of the parties’ briefing at the motion to exclude stage of the proceedings. AIPLA also argued that the reasonableness aspect of the Board’s institution threshold provides ample protection from gamesmanship by Petitioners.

Cannon submitted its amicus brief in support of Petitioner and argued that the Board’s rules, “when properly applied, do not set a high-pre-institution evidentiary bar,” and therefore, the standard should not be “exacting.” Cannon echoed AIPLA’s arguments that, at institution, the Board should resolve evidentiary issues in favor of the Petitioner. Cannon also argued that requiring a declaration of an individual with personal knowledge of the publication is unreasonable, and that a statement by the person who obtained the reference should be sufficient.

Google et al. argued that the same evidentiary burden required of examiners in making a prima facie case of rejection during prosecution or reexamination should be required of Petitioners in IPR petitions. Google et al. argued that requiring Petitioners to submit expansive evidence for every non-patent reference would substantially increase the cost of IPR petitions and would discourage Petitioners from relying on such references in PTAB proceedings. Finally, Google et al. argued that if the POPR contained evidence that challenged the status of a printed publication, the petitioner should be permitted to submit additional evidence in a reply.

Sandoz argued that “a clear standard that can be uniformly applied and that will yield generally consistent outcomes” is needed. Sandoz proposed that “[f]acial indicia” that an asserted reference was publicly available should be sufficient to meet the threshold for institution. Where evidence of publication is not available on the face of a reference, Sandoz proposed that reasonable additional circumstantial evidence should be considered. Sandoz, like other amici, argued that the merits of any evidentiary disputes should be decided after institution.

Like other amici, Unified Patents argued that a “reasonable likelihood” standard should be used to determine if a reference qualifies as a printed publication in an IPR. Unified Patents explained that any standard above the “reasonable likelihood” standard would heighten the standard for institution, which contradicts the statute and the Office’s own regulation.

New Precedential Decisions on Serial Petitions and Related Proceedings

The PTAB recently designated two more decisions as precedential:

Valve Corp. v. Elec. Scripting Prods., Inc., IPR2019-00062, -00063, -00084 (PTAB Apr. 2, 2019) (Paper 11)

TAKEAWAY: The board may deny a serial challenge under General Plastics, even where the follow-on petition is filed by a different party. The Board will be more likely to deny institution where there is a pre-existing relationship with the prior petitioner, especially if there is evidence of gamesmanship or attempts to avoid the serial petition review.

NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752 (PTAB Sept. 12, 2018) (Paper 8)

TAKEAWAY: The Board will be mindful of concurrent proceedings in another venue in applying the Becton, Dickinson factors, and will likely deny institution where the other proceeding is further along, set to conclude first, and involves the same issues and standards, prior art references, and arguments.