Alert August 08, 2019

Issue Eighteen: 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.

PTAB Publishes Update to Trial Practice Guide

The PTAB published a second update to its Office Patent Trial Practice Guide, first published in August 2012. Some of the updates are highlighted below.

Protective Orders: The update provides guidance on the procedures for motions to seal, the entry of protective orders, and requests for modifications to the default protective order. A Default Protective Order is provided as Appendix B.

Additional Discovery: The Board provides a detailed explanation of the Garmin factors considered when deciding a motion for additional discovery. The update also outlines two scenarios where parties have often sought additional discovery—issues of real parties in interest and secondary considerations of non-obviousness—and provides guidance as to when such a request might be appropriate.

Live Testimony: The update confirms that live testimony is only necessary in limited circumstances and outlines when live testimony is permitted or required. The update also indicates when cross-examination may be ordered to take place in the presence of an administrative patent judge.

Claim Construction: The update includes guidelines on claim construction issues that arise in PTAB proceedings. Specifically, the update states that if a Patent Owner raises new claim construction issues in response to the petition, the Petitioner may respond to the new issues, even if not addressed in the Petition. Additionally, if the Board raises issues of claim construction, both parties will be afforded an opportunity to respond. The update also outlines how and when information related to claim construction from other proceedings should be presented to the Board.

Preliminary Testimony With POPR: The Board expressly authorizes Patent Owners to withdraw any testimonial evidence submitted with a POPR after trial is instituted and thereby avoid deposition of the declarant. To do so, Patent Owners must affirmatively withdraw the testimony.

Considerations in Trial Institution:

  • Follow-on Petitions: The update outlines the non-exclusive General Plastics factors the Board uses to determine whether to use its discretion to deny follow on petitions and encourages parties to address these factors when they are relevant.
  • Multiple Petitions: The Board notes that multiple petitions are rarely required to challenge a patent, but recognizes that multiple petitions may be necessary in some cases. When filing multiple petitions challenging the same patent, the Board asks Petitioners to (1) rank the importance of the Petitions, and (2) explain the differences between the Petitions and why the Board should not use its discretion to deny institution.
  • Duplicative Arguments: The update outlines the non-exclusive Becton-Dickinson factors that will be considered when analyzing the Board’s discretion to deny institution pursuant to § 325(d).

Motions to Amend: The update provides details on the procedures and considerations regarding motions to amend claims during PTAB proceedings.

Motions for Joinder: The update provides guidance on the factors that the Board may consider in determining whether to grant a motion for joinder. Importantly, the Board notes that any party filing a motion to join should request a conference call with the Board within five days of filing the joinder motion.

Remand Procedures: The update restates the Board’s expressed goal to issue decisions on cases remanded from the Federal Circuit within six months of the Board’s receipt of the Federal Circuit’s mandate and provides guidance on procedures to follow after remand.

High Cost of Prior Art Reference Weighs Against Finding of Public Accessibility

In ASM IP Holding B.V., v. Kokusai Elec. Corp., IPR2019-00369, Paper 8 (June 27, 2019), the Board declined to institute, finding that Petitioner had not established that the asserted prior art reference was publicly accessible at the time of the invention. Petitioner argued that the reference at issue, an operating instructions manual for a publicly sold product, was publicly accessible because it was provided to purchasing customers who were “interested persons and persons of ordinary skill in the art.” The Board held that it is “not enough for Petitioner to establish that a product was available to the public,” but “the critical inquiry is whether the document itself was publicly accessible.” Importantly, the Board found that there was little evidence that anyone other than paying customers had access to the manual and noted that the high cost of the product—$65,000—“weigh[ed] heavily” against a finding of public accessibility

Takeaway: In considering public accessibility, the relevant inquiry is whether a reference is accessible to interested persons of ordinary skill. Barriers to this accessibility—such as requiring purchase of a high-priced piece of equipment—may weigh against a finding that a reference is a printed publication available for use in an IPR.

Challenge of One Patent Is Insufficient to Trigger Discretion to Deny Petition Challenging Related Patent

In Moderna Therapeutics, Inc. v. Arbutus Biopharma Corp., IPR2019-00554, Paper 8 (July 24, 2019), the Board granted institution, declining to exercise its discretion to deny institution under 35 U.S.C. § 314(a). The Board rejected Patent Owner’s argument that it should deny institution where Petitioner had previously filed an IPR against a similar, related patent relying on the same prior art. The Patent Owner argued that Petitioner was harassing Patent Owner with serial challenges, and Petitioner was abusing the process to gain the benefit of reviewing Patent Owner’s arguments and the Board’s rulings from the earlier proceeding. The Board noted that “[c]ertain of Patent Owner’s concerns regarding the overlap between this proceeding and the [previous proceeding] resonate” but ultimately rejected Patent Owner’s argument, stating “[w]e are unaware of . . . any decision by the Board relying on a previously filed petition concerning one patent as a basis for denying institution under § 314(a) of a subsequent petition challenging a second (albeit, related) patent.”

Takeaway: Using the same or similar prior art to sequentially challenge related, but different, patents may not trigger the Board’s discretion to deny institution. This strategy may give Petitioners the benefit of seeing Patent Owner’s argument and the Board’s reactions in the first proceeding which can be used to polish the arguments in the second petition. Petitioners considering filing related petitions, however, should make clear in any follow on petition the differences between the petitions and the challenged patents as the Board is unlikely to tolerate gamesmanship.

Federal Circuit Analyzes Article III Standing for IPR Appeals

In General Elec. Co. v. United Techs. Corp., No. 17-2497 (Fed. Cir. July 10, 2019) (precedential), the Federal Circuit examined the injury in fact requirements for Article III standing. General Electric (“GE”) appealed the Board’s decision upholding the challenged claims of a United Technologies Corporation (“UTC”) patent that GE challenged in an IPR. UTC moved to dismiss GE’s appeal for lack of standing. GE argued that it had standing because it suffered competitive injury, economic loss, and the future threat of litigation. UTC argued GE suffered no injury in fact because UTC did not threaten to enforce its patent against GE and GE had not developed, and offered no definitive plans for developing, an engine that implicates the challenged claims. GE also did not show any economic loss in having to design around the challenged patent. The Federal Circuit agreed with UTC, finding all of GE’s claims of injury too speculative to establish standing here.

Takeaway: While evaluating injuries in fact remains a fact-intensive procedure, the Federal Circuit may take a narrow view regarding the bases for which a competitor may establish Article III standing to appeal an IPR decision, particularly if the court concludes there is no risk of patent infringement. Appellants should be sure to articulate a robust analysis of the injury suffered when seeking to appeal a decision when a potentially infringing product is not on the market or in active development.

Conclusory Statement Citing to Expert Declaration Violates the Rule Against Incorporation by Reference

In Comcast Cable Commc’ns, LLC v. Promptu Sys. Corp., IPR2018-00344, Paper 59 (June 28, 2019), the Board found the challenged claims not unpatentable. With respect to one Ground, the Board found that the Petition did not sufficiently support a finding that the asserted reference was entitled to an earlier filing date and therefore was not prior art. The Board explained that the Petition’s sparse explanation—comprising only two sentences and citing to over 170 paragraphs spanning 80 pages in the expert declaration—failed to comply with the rule that arguments must be set forth in the Petition and cannot be incorporated by reference from a declaration.

Takeaway: PTAB Rule 42.6(a)(3) prohibits incorporation by reference. The Board has made clear that it will not consider arguments that are presented solely in an expert declaration. Merely including a conclusory statement in the Petition that cites to expansive discussion in an expert declaration may lead the Board to entirely disregard such arguments.

New Precedential Decision

The POP recently designated Focal Therapeutics, Inc. v. SenoRX, Inc., IPR2014-00116, Paper 19 (July 21, 2014), as precedential. This decision confirms that counsel may not discuss the substance of deposition testimony with a witness during cross or re-cross examination, but counsel may confer with a witness before redirect examination begins.