Presenting a live 90-minute webinar with interactive Q&A Latest PTAB Decisions: Leveraging Trends in Institution and Final Written Decisions, Understanding Federal Circuit Scrutiny To Date THURSDAY, MARCH 30, 2017 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific Today’s faculty features: Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner , Washington, D.C. Joshua L. Goldberg, Partner, Finnegan Henderson Farabow Garrett & Dunner , Washington, D.C. Cory C. Bell, Esq., Finnegan Henderson Farabow Garrett & Dunner , Boston The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 10 .
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Disclaimer • These materials have been prepared solely for educational and entertainment purposes to contribute to the understanding of U.S. intellectual property law. These materials reflect only the personal views of the authors and are not individualized legal advice. It is understood that each case is fact specific, and that the appropriate solution in any case will vary. Therefore, these materials may or may not be relevant to any particular situation. Thus, the authors and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (including Finnegan Europe LLP, and Fei Han Foreign Legal Affairs Law Firm), cannot be bound either philosophically or as representatives of their various present and future clients to the comments expressed in these materials. The presentation of these materials does not establish any form of attorney-client relationship with these authors. While every attempt was made to ensure that these materials are accurate, errors or omissions may be contained therein, for which any liability is disclaimed. 4
Trends We See •Maintaining the “no appeal of institution decision” for any reason. • Trying to keep the PTAB within the bounds of the statute, case law, and CAFC not letting it run unchecked, though affirmance rate remains very high. • Increased application of the APA to protect both patent owners and petitioners. • Consistent in its approach to granting proposed amendments and granting rehearings (hardly ever). PTAB • Pretty consistent in its handling of anticipation and obviousness in IPRs. • Institution rate and claim cancellation rate declining somewhat. • Higher standards for proving NPL constitutes prior art. • Continuing to push to determine limits of AIA post-grant proceeding Patent estoppel provisions • Continuing to explore strategy balance between AIA post-grant proceedings and litigation Bar • Patent owners using AIA post-grant proceedings against other patent owners. 5
Petitions By Technology The overall institution rate across all technologies is 70% (3169/4526). As of Jan. 31, 2017 https://www.uspto.gov/sites/default/files/documents/aia_statistics_january2017.pdf 6
If IPR Instituted, Cancellation Rate Is High! “Mixed outcome ”: at least one instituted claims survived and at least one instituted claim was canceled. As of Feb. 1, 2017. Source : http://www.aiablog.com/claim-and-case-disposition/ 7
FWDs and Claim Survival Rate: Finnegan Stats As of Feb. 1, 2017 http://www.aiablog.com/technology-breakdown/ 8
NOTABLE PTAB DECISIONS OVER THE LAST 12 MONTHS 9
AIA law applied On-Sale Bar • Dr. Reddy’s Laboratories, Ltd. v . Helsinn Healthcare S.A. , PGR2016-00008, Paper 11 (P.T.A.B. Aug. 17, 2016) – Patent Owner laid the groundwork for defending against the §102 and §112 attacks during prosecution. – PTAB: • “The AIA enlarged the scope of prior art under § 102 with respect to territory, and also added the clause ‘otherwise available to the public.’ …As an AIA first -inventor- to-file patent, the ’942 patent is subject to AIA § 102(a)(1 ).” • “The [distrct] court in Helsinn Healthcare…concluded ‘that §102(a)(1) requires a public sale or offer for sale of the claimed invention’ and ‘[t]he new requirement that the on-sale bar apply to public sales comports with the plain language meaning of the amended section, the USPTO’s interpretation of the amendment, and the legislative history of the AIA .” Id. at *45.” (issue in Teva v. Helsinn appeal, argued October 4, 2016). 10
On-Sale Bar AIA law applied • DRL v. Helsinn , PGR2016-00008 ( con’t ) – PTAB ( con’t ): • “Moreover, the court emphasized that ‘the post -AIA on-sale bar inquiry is not focused on the public disclosure of the sale or offer for sale; rather, the ‘sale’ prong of the on -sale bar requires that the sale make the claimed invention available to the public one year prior to its critical date.’ Id. at *52.” • “Petitioner has established that MGI’s Form 8-K SEC filings and Helsinn’s press releases made public the existence of the Supply and Licensing Agreements, but Petitioner has not shown that the heavily redacted SEC filings or the press releases, devoid of detail, made the claimed invention available to the public. Thus, we determine that the Supply and Licensing Agreements did not make the claimed invention available to the public one year prior to the critical date at issue here. Accordingly, we determine that Petitioner has failed to show that it is more likely than not that claims 1 – 19 are in violation of the on-sale bar under 35 U.S.C. § 102(a)(1). ” 11
PTAB Applies “Public Accessibility” Test to Pre -AIA § 102 Also • Actavis, Inc. v. Research Corporation Technologies, Inc. , IPR2014-01126, Paper 21 (P.T.A.B. Jan. 9, 2015)(university thesis) • Oxford Nanopore Tech. Ltd. v. Univ. of Washington , IPR2014- 00512, Paper 12 (P.T.A.B. Sept. 15, 2014)(grant applications) • HTC Corp., v. Cellular Comm’ns Equip. LLC. , IPR2016-01503, Paper No. 7 (Feb. 13, 2017)(standards documents) 12
Successful Motion To Amend • Global Tel*link Corp. v. Securus Technologies, Inc. , IPR2015- 01225, Paper 44 (P.T.A.B. Dec. 14, 2016) – PTAB FWD: 7 instituted claims unpatentable, 1 survived. – Paper 45 (P.T.A.B. Dec. 14, 2016) Contingent Motion to Amend to Substitute Claims granted except with respect to two proposed claims. • Patent Owner provided: – detailed analysis and liberal citations to the original disclosure and prior art, – expert declaration – explanation how the original disclosure purportedly supports the proposed substitute claims – proposed a level of ordinary skill in the art for the substitute claims – proposed claim constructions for some terms in the substitute claims. – provided detailed analysis regarding how each substitute claim purportedly is patentable over the prior art; – identified the known closest art. 13
Successful Motion To Amend • IPR2015-01225 ( con’t ) – Contingent Motion to Amend to Substitute Claims granted except with respect to two proposed claims. • Patent Owner narrowed the scope of original claims. • Patent Owner showed written description support for the amended claims in the original disclosure. • Patent Owner showed patentability of substitute claims over prior art. • Denied two proposed substitute claims because Patent Owner did not show proposed substitute claim 15 is patentable over the prior art or that proposed substitute claim 16 does not contain new matter. 14
Granted Proposed Amended Claims Still Rare As of Feb. 1, 2017. Source : Finnegan research, http://www.aiablog.com/claim-and-case-disposition/ 15
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