Alert October 30, 2020

Issue 31: PTAB Trial Tracker

As a result of feedback it received, the PTAB introduced a new web portal that allows any member of the public to nominate a decision for precedential or informative designation. The request must provide information about the case and an explanation of “brief reasons for nomination.” Notably, the new web portal allows for anonymous submissions. The greater accessibility and the anonymity provided by the portal may impact the frequency and type of decisions that are designated as precedential or informative.

Petitioner Not Estopped From Relying On Prior Art Product In Litigation

In Medline Industries, Inc. v. C.R. Bard, Inc., No. 1:17-cv-07216, ECF No. 219 (N.D. Ill. Sept. 14, 2020) (Ellis), the district court denied Medline’s motion to strike certain of Bard’s arguments, finding that Bard was not statutorily or judicially estopped from asserting them despite a final written decision upholding patentability of some of the challenged claims. After Medline brought an action for infringement, Bard filed IPR petitions challenging the asserted patents, and the district court action was stayed pending the outcome of the IPR. The Board issued final written decisions upholding the patentability of a portion of the challenged claims, and the district court litigation resumed.

Medline argued that Bard should withdraw all prior art based invalidity arguments due to the estoppel effect of the IPRs. Bard agreed to withdraw its arguments based on the reference that served as the primary reference in the IPRs, but continued to assert other obviousness arguments. Bard argued that estoppel should not apply because the arguments in the district court were based on prior art products, not printed publications that could have been raised in the IPRs. The court interpreted statutory estoppel as only applying to specific grounds that were asserted in the IPRs, but analyzed whether the prior art products were “printed publication-based invalidity theories in disguise.” In light of Bard’s reliance on photographs of the products in its invalidity contentions, rather than extensive reference to, e.g., product manuals, the court found that statutory estoppel did not preclude these arguments. The Board also found that Bard was not judicially estopped because none of Bard’s representations about the impact of the IPR on the arguments in the litigation was egregious.

TAKEAWAY: Several district courts have considered the issue of estoppel as it relates to arguments based on non-printed-publication prior art not eligible for use in a PTAB challenge, see Issue 19, Issue 23 and Issue 26, but there is no clear consensus on whether these types of arguments will be estopped.

Errors That Impact Substance, Even If Clerical In Nature, May Not Be Correctable

In Sweegen, Inc. v. PureCircle SDN BHD, IPR2020-00070, Paper 9 (Sept. 22, 2020), the Board denied Petitioner’s request to correct a clerical error in a declaration submitted with the petition. Petitioner sought to correct the data presented in a declaration filed in support of Petitioner’s arguments regarding an inherent property of the prior art after it realized that there was an error in the tabulation of the data. The Board rejected Petitioner’s request, finding that the changes sought were substantive and would therefore prejudice Patent Owner if added at the end of the window for Patent Owner to file its preliminary response.

TAKEAWAY: While parties can correct clerical errors without otherwise impacting the proceeding, the corrections must not be substantive. When faced with an error, parties must weigh how far to go in adjusting the content of the submissions in the requested corrections.

Exclusive Licensee And Real Party In Interest Required To Establish Right To Amend

In Pediatric Hair Solutions Corporation v. Larada Sciences, Inc., IPR2019-01231, Paper 33 (Sept. 10, 2020), Larada was the exclusive licensee with all substantial rights to the challenged patent. Larada filed a motion to amend its claims with the Patent Owner’s preliminary response to the petition and requested preliminary guidance. In its preliminary guidance, the Board noted that it could not “confirm that Larada has been granted the right to amend the patent as part of its license rights.” Id. at 2, n. 1. The Board stated that before it granted the motion to amend, Larada would need to establish that it has the right to amend the claims or otherwise has a “sufficient proprietary interest in the patent to allow it to amend.” Id.

TAKEAWAY: Real parties in interest may need to provide proof of their patent rights if seeking to alter the claims or the scope of the patent.