August 20, 2020ArticlePTO Issues Guidelines: Admitted Prior Art Cannot Be the Basis of an IPR ChallengeUnder 35 U.S.C. § 311(b), IPRs are only instituted "on the basis of" patents and printed publications. But, occasionally petitioners have relied on statements in a patent's specification as "applicant admitted prior art" and included that prior art in their grounds in a petition—either alone or in combination with other references. More
March 23, 2020ArticleFederal Circuit Denies Rehearing in Arthrex v. Smith & NephewOn March 23, 2020, approximately two months after all briefs were submitted, the Fed. Cir. has denied the outstanding petitions for panel rehearing and rehearing en banc in Arthrex, Inv. v. Smith & Nephew, Inc. (CAFC No. 2018-2140) (decision here). As a reminder, the Arthrex panel concluded that the PTAB's Administrative Patent Judges (APJs) were improperly appointed principal officers under the Constitution's Appointments Clause. To remedy this deficiency, the panel severed the APJ's Title 5 removal protections, thereby (according to the panel) rendering APJs inferior officers and prospectively curing any Appointments Clause infirmity in PTAB final written decisions post October 31, 2019. The Fed. Cir.'s rehearing denial leaves a change to the current Arthrex remedy in the hands of Congress or the Supreme Court. More
March 19, 2020ArticleFederal Circuit Rules That IPR Issue-Joinder Practice Is Not AllowedLast March I wrote about the PTAB's Precedential Opinion Panel (POP) taking up its first case in Proppant Express Invs., LLC et al. v. Oren Tech., LLC (article here). In that case, the POP concluded that, where fairness requires it, 35 U.S.C. § 315(c) allows a petitioner to file an otherwise time-barred IPR petition and join that petition to its previously-instituted IPR to request joinder and consideration of new issues ("issue joinder"). Although this tool was rarely used, issue joinder allowed an IPR petitioner to attempt to add new claims/grounds to a previously instituted IPR if, for example, those claims were asserted by the patent owner after petitioners' one-year-filing window. Just over a year later, the Fed. Cir. has reversed this POP decision. More
February 7, 2020ArticleClaim Indefiniteness To Provide An End Around SAS?In Samsung Electronics America, Inc. v. Prisua Engineering Corp., the Fed. Cir. confirmed that, outside of the context of a motion to amend, the PTAB cannot cancel claims for indefiniteness in an IPR proceeding. Specifically, the Court found that if the PTAB cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, the proper course for the PTAB to follow "is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or103. It would not be proper for the Board to cancel claims on a ground that is unavailable in an IPR." More
December 9, 2019ArticleMotions to Amend in Inter Partes Review: Why did Ethicon Cut Against the Grain?Motions to amend (MTAs) are generally disfavored. The prevailing approach calls for patentees to file an MTA in Inter Partes Review (IPR) only in limited circumstances. In particular, most patentees are moving to narrow or clarify claim scope via an MTA only in cases where (i) there is no related application pending at the Office and (ii) the specter of lost past damages due to intervening rights outweighs the risk of an invalidity finding. At first glance, neither (i) nor (ii) appears to be true in the case of Intuitive Surgical, Inc. v. Ethicon, LLC, (IPRs2018-00933, 00934, and 00935), yet Ethicon elected to pursue an MTA in each of the IPRs and was successful in doing so. More
November 20, 2019ArticleShort-Term Uncertainties after ArthrexThe Federal Circuit in a precedential opinion in Arthrex, Inc. v. Smith & Nephew, Inc., vacated and remanded a final written decision of the Patent Trial and Appeal Board (PTAB), finding that the Administrative Patent Judges (APJs) are not constitutionally appointed, violating the Appointments Clause. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019). The opinion in Arthrex also indicates that an Appointments Clause challenge should be timely raised on appeal, and thus, is waived when not presented in an appeal that has passed or been decided. More
October 11, 2019ArticleThe Flip Side of Reasonable Expectation of Success is UnpredictabilityThe Federal Circuit in a precedential opinion in Osai Pharmaceuticals, LLC v Apotex et al (Fed. Cir., October 4, 2019) the USPTO's determination of obviousness in an IPR for patent claims directed to the treatment of non-small cell lung cancer (NSCLC). Just reading the background of the first three or four pages of the decision, it was already apparent that the Court was not going to be affirming the PTAB's decision. Notably: More
September 19, 2019ArticlePrior Art Introduced During Prosecution Has Important Implications for 101 ChallengesFive years after Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208 (2014) and the institution of the Alice test, district courts are still wading through precedent set by the Federal Circuit while it attempts to apply the test. Recently, one New Mexico District Court turned to prior art introduced during the prosecution process that was aimed at the questions of novelty and non-obviousness to determine whether there was an "inventive concept" for the Alice/Mayo test. More
July 17, 2019ArticleUSPTO Publishes its Second PTAB Trial Practice Guide UpdateOn July 16, 2019, the Patent Office published its 2019 Trial Practice Guide Update, a copy of which can be found here. This follows on the heels of last August's Trial Practice Guide Update (here) which, perhaps most importantly, provided patent owners with a sur-reply to petitioner's reply brief as a matter of right. More
June 17, 2019ArticleCommercial Success of Claimed Product over Non-Infringing Competitive Products as Evidence of Non-ObviousnessDuring litigation or contested proceeding the patentee can point to commercial success of a product as evidence of non-obviousness of the claimed product. Although some work is necessary to show the nexus between the success in the market and the claimed invention, the evidence showing, for example, the product taking sales from competitive products could help the patentee's case. More
June 14, 2019ArticleSOVEREIGN IMMUNITY AND IPR'S: AND NOW, THE REST OF THE STORYRadio great Paul Harvey would always leave listeners hanging during his broadcast, then return from a commercial with "the rest of the story". Previously, I wrote on the Federal Circuit ruling with respect to Tribal Immunity ( At the end of that article I stated: "I note, however, that in the final sentence of their analysis, the Federal Circuit explicitly stated that this decision did NOT address whether there is any reason to treat state sovereign immunity differently with respect to IPR proceedings. That will remain to be seen…" More
May 9, 2019 ArticlePTAB Issues Two New Precedential Opinions On Discretion to Deny Review - Implications for GenericsThe PTAB designated two decisions as precedential this week (in addition to several in previous weeks), both relevant to the Board's discretion to deny review. These cases illustrate that the PTO is in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. See my previous posts on other recent precedential decisions here and here. More
April 17, 2019ArticlePTAB Issues Three New Precedential Opinions On RPIThe PTAB designated three decisions as precedential yesterday (in addition to several in previous weeks). These cases illustrate that the PTO is in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. More
March 20, 2019ArticlePTAB Issues Three New Precedential OpinionsThe PTAB designated three decisions as precedential this week (in addition to two earlier this month), indicating that the PTO may be in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. More
March 19, 2019ArticleInvention by "Another": Duncan Parking Technologies, Inc. v. IPS Group, Inc., Appeal No. 2018-1205, -1360 (Fed. Cir. Jan. 31, 2019)IPS Group Inc. ("IPS") appealed from two decisions of the United States District Court for the Southern District of California granting summary judgment of non-infringement of U.S. Patents 8,595,054 and 7,854,310. Duncan Parking Technologies Inc. ("DPT") appealed from a related decision of the Patent Trial and Appeal Board ("the Board") in an inter partes review holding that claims 1–5 and 7–10 of the '310 patent were not shown to be unpatentable as anticipated under 35 U.S.C. § 102(e). More
March 14, 2019ArticlePTAB Precedential Opinion Panel Clarifies Issue Joinder Under 35 U.S.C. § 315(c)In the first case to be taken up by the PTAB's Precedential Opinion Panel (POP), Director Iancu, Commissioner Hirshfeld, and then Acting Chief Judge Boalick (now appointed) have determined that, under appropriate and limited circumstances, a petitioner may join its own previously-instituted IPR to request joinder and institution of new issues. More
March 11, 2019ArticleMotions to Amend: Is the PTAB's Lectrosonics Order Just of Western Digital?Spring gardening season has begun and the USPTO is once again planting its Motion to Amend ("MTA") seeds. In a substantial redux of Western Digital Corporation v. Spex Technologies, IPR2018-00082, -00084, paper 13, the PTAB this past week designated paper 15 of Lectrosonics v. Zaxcom, IPR2018-01129, 01130("Lectrosonics Order") as an informative decision. More
February 24, 2019ArticleNo More IPRs From Generic Drug Makers?The USPTO argues that a petitioner who has received a favorable final written decision in an IPR is estopped from reusing the same winning argument in a district court. More