Publications – Oblon, McClelland, Maier & Neustadt, L.L.P. https://www.oblon.com/?r=publications/feed Intellectual Property Law Firm en-us 01 Jul 2022 00:00:00 -0800 firmwise http://blogs.law.harvard.edu/tech/rss PTAB Updates: USPTO Issues Update on Fintiv Practice and Provides Further Guidance on the Interim Director Review Process https://www.oblon.com/?t=40&an=126083&anc=995&format=xml <p>It&rsquo;s been a busy few days for Director Vidal and the USPTO, with the Office providing updated guidance on how the PTAB will apply its discretion under <i>Fintiv </i>when considering post-grant petitions and separately issuing updated guidance on the interim Director review process.</p> <p><b><i>Fintiv</i></b><b> Update</b></p> <p>On June 22, 2022, the Office issued a memo providing Director Vidal&rsquo;s and the Office&rsquo;s current thinking on <i>Fintiv</i> and the PTAB&rsquo;s ability to discretionarily deny a post-grant proceeding in view of the status of a parallel litigation.&nbsp; Specifically, the Office explained that it will not deny institution of an IPR or PGR under <i>Fintiv</i>:(1) when a petition presents compelling evidence of unpatentability; (2) when a request for denial under <i>Fintiv</i> is based on a parallel ITC proceeding; or (3) where a petitioner stipulates not to pursue in a parallel district court proceeding the same grounds as presented in the petition or any grounds that could have reasonably been raised in the petition (<i>i.e., </i>a <i>Sotera</i>-style stipulation). &nbsp;As to <i>Fintiv</i> factor two, which looks at the proximity of the district court&rsquo;s trial date to the Board&rsquo;s projected statutory deadline for a final written decision, the Office&rsquo;s updated guidance makes clear that the PTAB will look to the median time-to-trial for a given district rather than specific case schedules. &nbsp;At the end of the day, these updated directives do not end <i>Fintiv</i> practice but they certainly lessen the general applicability of <i>Fintiv</i>, which appeared to be withering on the vine anyway.&nbsp; For respondents before the ITC, however, <i>Fintiv</i> appears to have met its end.</p> <p>The Office also released a study investigating the impact of PTAB denials of post-grant petitions when there is a parallel district court proceeding concerning the same patent.&nbsp; The study covers the second quarter of fiscal year 2019 through the first quarter of fiscal year 2022.&nbsp; As we indicated above, the study showed that there has been a sharp overall decline in <i>Fintiv </i>denials, in addition to the following:</p> <ul type="disc"> <li>After <em>Fintiv </em>was designated precedential, the status of a parallel litigation was raised in about 40% of all cases.</li> <li><em>Fintiv </em>denials peaked in the second quarter of fiscal year 2021 and dropped significantly afterward.</li> <li>The PTAB issued no <em>Fintiv </em>denials based on parallel litigation in the Western District of Texas since August 2021.</li> <li>The USPTO&rsquo;s guidance on using stipulations appears to have led to an increase in stipulation filings and a significant decrease in <em>Fintiv denials.</em></li> <li>The PTAB has denied institution based on <em>Fintiv</em> of only three total AIA petitions challenging drug patents: two Orange Book-listed patents and one biologic drug patent<em>.</em></li> </ul> <p>The guidance memo is available <a href="https://www.uspto.gov/sites/default/files/documents/interim_proc_discretionary_denials_aia_parallel_district_court_litigation_memo_20220621_.pdf?utm_campaign=subscriptioncenter&amp;utm_content=&amp;utm_medium=email&amp;utm_name=&amp;utm_source=govdelivery&amp;utm_term=">here</a> and the PTAB Parallel Litigation Study is available <a href="https://www.uspto.gov/sites/default/files/documents/ptab_parallel_litigation_study_20220621_.pdf?utm_campaign=subscriptioncenter&amp;utm_content=&amp;utm_medium=email&amp;utm_name=&amp;utm_source=govdelivery&amp;utm_term=">here</a>.</p> <p><b>Updated Guidance on the Interim Director Review Process</b></p> <p>Just one day prior to the Office&rsquo;s updated <i>Fintiv </i>guidance, the USPTO posted further guidance regarding the interim Director review process.&nbsp; The new guidance can be found on the USPTO Director review <a href="https://www.uspto.gov/patents/patent-trial-and-appeal-board/interim-process-director-review?utm_campaign=subscriptioncenter&amp;utm_content=&amp;utm_medium=email&amp;utm_name=&amp;utm_source=govdelivery&amp;utm_term=">webpage</a> under &sect; 10.&nbsp; In particular, the Office updated its guidance on how parties should focus on and prioritize issues when requesting Director review by (1) identifying any issues of first impression; (2) providing a priority-ranked list of issues being raised; and (3) providing a brief explanation of the issues and a brief explanation of the rationale for the prioritized-ranking of the issues.&nbsp;</p> <p>As previously mentioned in our <a href="https://www.oblon.com/the-uspto-issues-press-release-announcing-plans-to-formalize-the-director-review-process">April 22</a> post, the issues that may warrant review by the Director include: issues that involve an intervening change in the law or USPTO procedures or guidance, material errors of fact or law, matters that the PTAB misapprehended or overlooked, novel issues of law or policy, issues on which PTAB panel decisions are split, issues of particular importance to the Office or patent community, or inconsistencies with Office procedures, guidance, or decisions.&nbsp; By way of example, Director Vidal just recently granted a request for Director review based on the patent owner&rsquo;s argument that the PTAB misapplied the law concerning multiple-dependent claims and the Board&rsquo;s ability to cancel dependent claims if one&mdash;but not both&mdash;base independent claims are found unpatentable.&nbsp; <i>See Nested Bean, Inc. v. Big Beings USA Pty Ltd</i>, IPR2020-01234, Paper 36 (June 17, 2022).&nbsp;</p> <p>Relatedly, Director Vidal noted there are three areas where she, personally, may become involved in reviewing PTAB decisions:&nbsp; when an error of fact or law by the Board needs to be addressed, when new issues arise where the USPTO does not have guidance, and when clarification is needed as to how the law will be interpreted and applied.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;</p> <p>In anticipation of a Request for Comments concerning the Director review process, the USPTO is accepting preliminary feedback from the public at <a href="mailto:Director_Review_Suggestions@uspto.gov">Director_Review_Suggestions@uspto.gov</a> until July 11, 2022.</p> Article 23 Jun 2022 00:00:00 -0800 https://www.oblon.com/?t=40&an=126083&anc=995&format=xml Federal Circuit Reverses Novartis Gilyena Negative Limitation Decision https://www.oblon.com/?t=40&an=126075&anc=995&format=xml <p>On June 21, 2022, the Federal Circuit acting on a request for panel rehearing in the decision by the Federal Circuit in <i>Novartis v. Accord Health Care, Inc.</i>, 21 F.4th 1362 (Fed. Cir. 2022), affirming the district court&rsquo;s decision of infringement and validity of the Novartis patent on Gilenya, U.S.P. 9,187,405, granted the request and proceeded to reverse the original decision and hold the asserted claim invalid for failing to comply with the written description of 35 U.S.C. &sect; 112(a).</p> <p>The difference between the original decision and the rehearing was a change in the panel. Judge O&rsquo;Malley, who wrote the original opinion in which Judge Linn joined, left the Federal Circuit. Judge O&rsquo;Malley was replaced by Judge Hughes who joined with Chief Judge Moore, who had dissented in the original opinion, in reversing the decision. The abrupt reversal of the Federal Circuit was not the result of a change in law but rather a change in the composition of the panel. This is yet another demonstration of the Federal Circuit&rsquo;s failure to be consistent from panel to panel on a legal/factual question.&nbsp; It was just such flip-flops that Judge Albright called out in his Memorandum Opinion in <i>Health Discovery Corp. v. Intel Corp</i>. case 6:20-cv-0666-ADA, December 27, 2021, on a motion to dismiss under 35 U.S.C. &sect; 101. Judge Albright examined four Federal Circuit opinions on patent eligibility, two finding eligibility and two not and could not discern the factual differences resulting the contrary conclusions. The Federal Circuit&rsquo;s inconsistent decisions cause uncertainty in the prosecution and enforcement of patents to the detriment of the progress of the useful arts.&nbsp;</p> <p>In <i>Novartis, </i>five judges considered the written description question with 3, two Federal Circuit judges and Third Circuit Judge Kent Jordan, sitting in the district court, finding written description for the negative claim limitation of administering fingolimod &ldquo;at a daily dosage of 0.5 mg, absent an immediately preceding loading dose regimen.&rdquo; The USPTO had allowed Novartis to amend the claims to add the limitation. Only Judges Moore and Hughes found no written description. They found &ldquo;clear error&rdquo; in Circuit Judge Kent&rsquo;s opinion where Judges O&rsquo;Malley and Linn found none and where the USPTO had considered the limitation supported. Thus, three Judges and USPTO had found written support, but Judges Moore and Hughes found none and reversed the decision. If there was such clear error why such a split?</p> <p>The facts are simple, the &lsquo;405 patent did not describe not using a loading a dose. Neither did it describe using a loading dose.&nbsp; There was evidence, found persuasive by Judges Jordan, O&rsquo;Malley and Linn and the USPTO that the specification would lead to not to use a loading dose (an initial dose larger than normal). Judges Moore and Hughes disagreed pointing to other evidence that would suggest that a loading dose might be used which precluded, in their opinion, finding written description of the &ldquo;absent an immediately preceding loading dose regimen.&rdquo; When you have such a split how can one say there is clear error?</p> <p>A difference of opinion is not clear error.</p> <p>This decision is a poster child of what is wrong with the Federal Circuit &ndash; the inability to be consistent in its decision making and failing to give proper deference to the opinions of others.</p> Article 22 Jun 2022 00:00:00 -0800 https://www.oblon.com/?t=40&an=126075&anc=995&format=xml Senators Leahy and Tillis Introduce PTAB Reform Act https://www.oblon.com/?t=40&an=126040&anc=995&format=xml <p>On Thursday, June 16, 2022, Senators Patrick Leahy (D-VT), Thom Tillis (R-NC), and John Cornyn (R-TX) introduced the Patent Trial and Appeal Board (PTAB) Reform Act of 2022 (PTAB Reform Act). According to the Senators, the legislation aims to address &ldquo;predictability, certainty, and fairness at the PTAB.&rdquo;&nbsp; And as provided by Senator Leahy&rsquo;s office, the bill has four main goals: (1) &ldquo;prevent[ing] abusive serial petitions from harassing patent owners;&rdquo; (2) &ldquo;prohibit[ing] [the] PTO from considering inaccurate district court litigation timelines;&rdquo; (3) &ldquo;revis[ing] the PTAB structure to conform with the Appointments Clause while preserving PTAB autonomy;&rdquo; and (4) &ldquo;address[ing] PTAB certainty and fairness in other areas.&rdquo; &nbsp;A description of the bill provided by Senator Leahy&rsquo;s Office can be found (<a href="https://www.leahy.senate.gov/imo/media/doc/PTAB%20Reform%20Act%20One%20Pager.pdf">here</a>), the full text of the bill can be found (<a href="https://www.leahy.senate.gov/imo/media/doc/OLL22554.pdf">here</a>), and a section-by-section summary of the bill can be found (<a href="https://www.leahy.senate.gov/imo/media/doc/PTAB%20Reform%20Act%20Section%20by%20Section.pdf">here</a>).</p> <p>On the issue of serial petitions, the bill would prohibit institution if there was previously a review that included the same patent claims by the same entity or a real party in interest or successor in interest to the petitioner.&nbsp; The PTAB currently has the discretion to enter such a denial and, in our view, such discretion may be a more appropriate way to handle serial petition abuses, which have greatly diminished since the PTAB&rsquo;s <i>General Plastics</i> decision.</p> <p>As to the bill&rsquo;s second goal, the bill would end the PTAB&rsquo;s discretionary denial authority under <i>Fintiv</i> and prohibit the PTAB from declining to institute a proceeding based on the status of a parallel litigation or ITC proceeding.&nbsp; Whether you decry or praise <i>Fintiv</i> may largely depend on whether you find yourself before the PTAB as a petitioner or Patent Owner, and use of <i>Fintiv</i> has dramatically decreased over the past 6 to 9 months.&nbsp; That being said, the emergence of <i>Fintiv</i> came as a surprise to many practitioners as the IPR statute provides a defendant with one year to get an IPR on file after being served with a complaint, seemingly without a denial mechanism based on the status of a parallel proceeding.</p> <p>To revise the PTAB&rsquo;s structure to conform with the Appointments Clause, the bill effectively codifies the Supreme Court&rsquo;s <i>Arthrex </i>Director review process. &nbsp;&nbsp;In so doing, however, the bill also explains that any Director review, whether on the Director&rsquo;s own initiative or at a party&rsquo;s request, must be issued in a separate written opinion that is made part of the public record and sets forth the reasons for the decision. &nbsp;This will allow, according to the Senators, &ldquo;the public [to] know which decisions come from PTAB judges and which come from a politically appointed and accountable Director.&rdquo; &nbsp;In addition, and if the bill passes in some form, the Director must, within 18 months, create rules laying out the timeline she has to review PTAB decisions and the bases on which <i>sua sponte </i>review may be conducted. &nbsp;The Director must also create (for party requested Director review) guidelines including a timeline, the required content, and the bases on which the party may request review.&nbsp; As we have discussed in our prior <a href="https://www.oblon.com/the-uspto-issues-press-release-announcing-plans-to-formalize-the-director-review-process">April 22</a> and <a href="https://www.oblon.com/ptab-update-uspto-issues-interim-process-for-ptab-decision-internal-review-and-the-federal-circuit-issues-an-opinion-in-arthrex-v-smith-nephew">May 27</a> posts, the Office and Director Vidal are already in the process of providing additional clarity to the interim Director review process.&nbsp; Relatedly, the bill imposes a 120-day deadline on rehearing/reviews decision.&nbsp; Currently, such decisions are covered by internal timing guidelines and not statutory requirements.&nbsp;</p> <p>Other aspects of the bill include, for example, reform efforts to address IPR misuses as exemplified by the <i>OpenSky Industries, LLC v. VLSI Technology LLC</i>&nbsp;and&nbsp;<i>Patent Quality Assurance, LLC v. VLSI Technology LLC</i> cases.&nbsp; The bill requires the Director to prescribe regulations to sanction petitioners who offer to deliberately delay or lose an instituted challenge for consideration, including suggested sanctions of barring that party from filing any IPRs for a year.&nbsp; Further, the bill would require that supervisors who are not members of a PTAB panel refrain from ex parte communication with a panel regarding a pending matter before them. &nbsp;More generally, the bill would mandate that PTAB judges follow the same code of conduct as United States judges.</p> <p>The bill clarifies the sometimes murky standard for appellate standing and explains that a final written decision of the PTAB may be appealed by any dissatisfied party that reasonably expects another person to assert estoppel based on the final written decision. &nbsp;Finally, the new bill proposes what we imagine may be a controversial provision to cover certain expenses incurred by micro and small entities for having to defend against a post-grant challenge if their patent has not been asserted in litigation.</p> <p>We will follow the progress of this bill and post updates on our website as they become available.</p> Article 17 Jun 2022 00:00:00 -0800 https://www.oblon.com/?t=40&an=126040&anc=995&format=xml US Court Ruling Will Affect Royalty Rate Calculations For Licence Agreements https://www.oblon.com/?t=40&an=126029&anc=995&format=xml <p><strong>Andrew Ollis</strong> and <strong>Frank West</strong> authored an article featured in the June 15, 2022 on line edition of IAM Magazine, regarding the Federal Circuit&rsquo;s June 3, 2022 holding in <i>Pavo Solutions v. Kingston Technology Co</i>., Appeal No. 21-1834. See, <a href="https://cafc.uscourts.gov/opinions-orders/21-1834.OPINION.6-3-2022_1960213.pdf">https://cafc.uscourts.gov/opinions-orders/21-1834.OPINION.6-3-2022_1960213.pdf</a>.&nbsp; The article &quot;<a href="https://www.iam-media.com/article/us-court-ruling-will-affect-royalty-rate-calculations-licence-agreements">US Court Ruling Will Affect Royalty Rate Calculations for Licence Agreements</a>,&quot; can be found on IAM Magazine's website.&nbsp;</p> <p>In that case, the Federal Circuit affirmed the jury verdict awarding $7.5 million in damages for Kingston&rsquo;s infringement of Pavo&rsquo;s patent and the district court&rsquo;s 50% enhancement of damages based upon the jury&rsquo;s finding that the infringement was willful.&nbsp; The Federal Circuit rejected Kingston&rsquo;s argument that the district court should have (i) limited the opinion of Pavo&rsquo;s damages expert regarding a prior license to a discussion of the per unit royalty rate of $0.01 and (ii) excluded the expert&rsquo;s reliance on the prior license&rsquo;s express characterization of the per unit royalty as constituting 25% of the licensee&rsquo;s profits.&nbsp; Pavo&rsquo;s expert relied upon that characterization to find that a 25:75 split of Kington&rsquo;s profits on the accused products was a factor for consideration in determining a reasonable royalty. &nbsp;The Federal Circuit also rejected Kingston&rsquo;s argument that Pavo&rsquo;s damages expert had not properly apportioned the royalty rate to exclude any value attributable to non-infringing features.&nbsp; The Federal Circuit noted that both parties&rsquo; experts found the prior license to be technically and economically comparable (i.e. the same technology, product types, and patent rights as in suit), and therefore, that the royalty rate in the prior license had a &ldquo;built-in&rdquo; apportionment between non-infringing and infringing features.&nbsp; The Federal Circuit also affirmed the district court&rsquo;s judicial correction of the claim language, finding &ldquo;[a]n obvious minor clerical error, by definition, does not mask that meaning [the intended claim language], so Kingston cannot hide behind the error to escape the jury&rsquo;s verdict.&rdquo;&nbsp; Slip Op. at 16 (interpolation added).&nbsp;</p> <p>The ruling provides lessons for both patent owners and alleged infringers.&nbsp; With respect to licenses, patent owners can plan a litigation damages strategy years in advance be including explanatory statements of financial terms in the license.&nbsp; Alleged infringers should be wary of such statements and carefully consider whether the value obtained by relying upon the agreement outweighs any potential negative impact of such explanatory statements.&nbsp; With respect to infringement, the parties should realize that uncorrected obvious errors in claim language may be corrected by a district court at trial and plan accordingly.</p> Article 16 Jun 2022 00:00:00 -0800 https://www.oblon.com/?t=40&an=126029&anc=995&format=xml Feds' Patent Injunction Views Murky After Dropped Policies https://www.oblon.com/A11960/assets/files/News/Feds' Patent Injunction Views Murky After Dropped Policies Law360 6.10.22.pdf&anc=995&format=xml Alexander Englehart has been quoted in &quot;<a href="https://www.law360.com/articles/1501270/feds-patent-injunction-views-murky-after-dropped-policies">Feds' Patent Injuction Views Murky After Dropped Policies</a>&quot; featured in <em>Law360</em>.&nbsp; Article 10 Jun 2022 00:00:00 -0800 https://www.oblon.com/A11960/assets/files/News/Feds' Patent Injunction Views Murky After Dropped Policies Law360 6.10.22.pdf&anc=995&format=xml USPTO Issues Updated Guidance on Use of Applicant Admitted Prior Art in IPR Proceedings https://www.oblon.com/?t=40&an=125979&anc=995&format=xml <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;On June 9, 2022, the USPTO issued updated guidance on the use of applicant admitted prior art (AAPA) in IPR proceedings, expanding upon a similar memorandum issued under prior Director Iancu. The Memo clarifies that while &ldquo;the basis&rdquo; of an IPR proceeding is limited to &ldquo;patents or printed publications,&rdquo; AAPA can be relied upon in combination with one or more patents or printed publications to support the petitioner&rsquo;s grounds of unpatentability.&nbsp; In other words, the petitioner cannot structure its ground of unpatentability such that the challenged patent is obvious in view of &ldquo;AAPA,&rdquo; where AAPA is expressly a basis of unpatentability, but AAPA could be used as supporting evidence in furtherance of an obviousness combination in view of one or more patents or printed publications.&nbsp; This is consistent with the Federal Circuit&rsquo;s recent holding in <i>Qualcomm</i> that patents or printed publications forming the basis of a ground for IPR must themselves be prior art to the challenged patent (as opposed to the challenged patent itself).&nbsp; <i>Qualcomm Inc. v. Apple Inc., </i>24 F.4th 1367 (Fed. Cir. 2022).&nbsp;</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The Office stated that evidence of a skilled artisan&rsquo;s knowledge remains fundamental to a proper obviousness analysis and such admissions are permissible evidence in an IPR proceeding for establishing the background knowledge possessed by a person of ordinary skill in the art and providing a factual foundation as to what a skilled artisan would have known at the time of the invention. The Office noted that the Board should determine whether the petition relies on admissions in the specification in combination with reliance on at least one prior art patent or printed publication and, if so, those admissions do not form the basis of the ground and therefore must be considered in the Board&rsquo;s patentability analysis.</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; According to the updated Memo, admissions regarding the scope and content of prior art under &sect; 103 can be used to &ldquo;(1) supply missing claim limitations that were generally known in the art prior to the invention (for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA patents); (2) support a motivation to combine particular disclosures; or (3) demonstrate the knowledge of the ordinarily-skilled artisan at the time of the invention (for pre-AIA patents) or the effective filing date of the claimed invention (for post-AIA patents) for any other purpose related to patentability.&rdquo;&nbsp; Admissions may include statements from the specification of the challenged patent related to what was &ldquo;conventional&rdquo; or &ldquo;well-known,&rdquo; though the parties may dispute the significance of such statements including whether the statements actually constitute admissions or evidence of the background knowledge possessed by a person of ordinary skill in the art.&nbsp;</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The Memo further clarified that the Board should not exclude the use of admissions based on the number of claim limitations or claim elements the admission supplies or the order in which the petition presents the obviousness combination, but rather, should review whether the asserted ground as a whole as applied to each challenged claim as whole relies on admissions in the specification in combination with reliance on at least one prior art patent or printed publication.&nbsp; The Office noted that while 37 CFR &sect; 42.104(b)(4) states that a petition &ldquo;must specify where each element of the claim is found in the prior art patents or printed publications relied upon,&rdquo; it does not foreclose the limited use of admissions as described in the June 9, 2022, Memo. &nbsp;That is, and so long as presented in the correct manner, the Board should not deny a petition in which an applicant points to general knowledge and/or a patentee&rsquo;s admissions regarding the scope and content of the prior art to satisfy a claim limitation.&nbsp;</p> Article 10 Jun 2022 00:00:00 -0800 https://www.oblon.com/?t=40&an=125979&anc=995&format=xml In a Rule 12(b)(6) Motion to Dismiss Patentee's IPR Arguments Doom Its Complaint for Patent Infringement https://www.oblon.com/?t=40&an=125940&anc=995&format=xml <p>On June 6, Judge Albright granted Meta Platforms. Inc.&rsquo;s (Meta) 12(b)(6) motion to dismiss a complaint filed by Grecia Estate Holdings LLC in part relying on Grecia&rsquo;s representations in IPR2016-00789 (IPR) to the PTAB that successfully defeated institution of the IPR.</p> <p>The complaint alleged infringement of claim 16 of U.S.P. 8,402,555 (&lsquo;555). Claim 16 reads:</p> <p style="margin-left: 40px;">16. The computer program product of claim 15, wherein the membership verification token comprises at least one token selected from a group consisting of a purchase permission, a rental permission, or membership permission coupled to a royalty scheme;</p> <p style="margin-left: 80px;">wherein the permission is represented by one or more of a letter, number, combination of letters and numbers phrase, authorization, list, interface button or an instrument of trade for access rights of the encrypted digital media.</p> <p>Claim 15 required that the &ldquo;membership verification token provided by a first user, corresponding to the encrypted digital media&rdquo; which is also a limitation of claim 16. Grecia in its complaint asserted that Facebook user&rsquo;s &ldquo;PayPal account or Debit and Credit Card number&rdquo; was the &ldquo;membership verification token.&rdquo; However, in the IPR Grecia asserted in its POPR that credit card information could not be the token because a credit number corresponds to the credit card account and not digital media. In the IPR the assertion carried the day for Grecia and institution of the IPR was denied. As a result, the court found that Grecia&rsquo;s allegations in the complaint contradict its prior statements in the IPR as to the scope of the claim. The court found that Grecia failed to &ldquo;articulate why it is plausible that the accused product infringes the patent claim.&rdquo; The court concluded Grecia cannot plausibly allege infringement on this ground.</p> <p>The key point is that representations made in an IPR as to claim scope can provide a basis for a dismissal on the pleadings. The IPR was treated by the court as part of the prosecution history of the patent citing <i>Aylus Networks, Inc. v. Apple, Inc.</i>, 856 F.3d 1353, 1362 n.3 (Fed. Cir. 2017). As such in an IPR one must be careful in arguing for patentability not to create a history which makes pleading infringement difficult or impossible.</p> Article 08 Jun 2022 00:00:00 -0800 https://www.oblon.com/?t=40&an=125940&anc=995&format=xml How I Made Partner: 'I Was Encouraged to Collaborate Frequently With Attorneys in All of the Firm's Departments,' Says Grace Kim of Oblon, McClelland, Maier & Neustadt https://www.oblon.com/?t=40&an=125915&anc=995&format=xml <p>Attorney <strong>Grace E. Kim</strong> was recently profiled by Law.com for its series &ldquo;How I Made Partner.&rdquo; In the interview, Grace discusses a number of topics about her career and her experience working her way up to partner. She also provides advice to associates who are looking to embark on the partner track.</p> <p>When asked why she chose to work at Oblon, Grace told Law.com, &ldquo;First, the firm has a stellar reputation. For decades, Oblon has obtained more patents than other law firms. Second, I found the location attractive. Oblon is located right next door to the U.S. Patent and Trademark Office in a beautiful area in Alexandria, Virginia.&rdquo;</p> <p>Grace also shared that the biggest surprise she experienced in becoming partner was &ldquo;the immediate switch in mindset from being an employee at the firm to becoming a co-owner of the firm with rest of the partnership&rdquo; stating that &ldquo;[a]s a partner, I have the same responsibilities, but the focus isn&rsquo;t solely on building my own practice. Now, maintaining client relationships and growing business is about the success of the firm as a whole, and I have to think about how my work contributes to this success.&rdquo;</p> <p>On a related note, Grace&rsquo;s advice to associates seeking a promotion is to &ldquo;demonstrate in some way that you are the firm&rsquo;s future&mdash;that you are a valuable player to maintaining current client relationships and that you will play a part in the firm&rsquo;s growth and vision.&rdquo;</p> <p>Grace also provided thoughts on what it takes to successfully develop business as an attorney, remarking, &ldquo;I believe the key to successful business development is to truly care about your clients&rsquo; successes and to come up with new ideas to help them develop their business as well as their own careers within their organization.&rdquo;</p> <p>You can read the full interview <a href="https://www.law.com/2022/06/01/how-i-made-partner-i-was-encouraged-to-collaborate-frequently-with-attorneys-in-all-of-the-firms-departments-says-grace-kim-of-oblon-mcclelland-maier-neustadt/">here</a>.</p> Article 07 Jun 2022 00:00:00 -0800 https://www.oblon.com/?t=40&an=125915&anc=995&format=xml 5 Things You Need to Become A Top Lawyer https://www.oblon.com/?t=40&an=125875&anc=995&format=xml <strong>Eric Schweibenz</strong> was interviewed by <em>Authority Magazine</em> and is featured in the article &quot;<a href="https://medium.com/authority-magazine/top-lawyers-eric-w-schweibenz-on-the-5-things-you-need-to-become-a-top-lawyer-in-your-specific-942dfe8ce383">Top Lawyers: Eric W Schweibenz on The 5 Things You Need To Become A Top Lawyer In Your Specific Field of Law.</a>&quot;&nbsp; Article 03 Jun 2022 00:00:00 -0800 https://www.oblon.com/?t=40&an=125875&anc=995&format=xml PTAB Update: USPTO Issues Interim Process for PTAB Decision Internal Review and the Federal Circuit Issues an Opinion in Arthrex v. Smith & Nephew https://www.oblon.com/?t=40&an=125815&anc=995&format=xml <p>Following the Supreme Court&rsquo;s decision in <i>U.S. v. Arthrex</i>, the USPTO quickly established an interim Director review process by which the &ldquo;[t]he Director [] may review final PTAB decisions and, upon review, may issue decisions himself on behalf of the Board.&rdquo; <i>See</i> our prior <a href="https://www.oblon.com/ptab-update-apjs-unreviewable-authority-reigned-in-by-supreme-court-but-the-ipr-process-survives">June 21</a>,&nbsp;<a href="https://www.oblon.com/?t=40&amp;an=117959&amp;anc=995&amp;format=xml">June 29</a>,&nbsp;<a href="https://www.oblon.com/uspto-updates-its-guidance-on-interim-director-review-process">July 21</a>, and <a href="https://www.oblon.com/uspto-grants-second-petition-for-director-review">November 22</a>posts.&nbsp; The USPTO has made recent efforts to increase transparency as it works to finalize the Director review process, issuing a press release with seven specific issues that may warrant review by the Director.&nbsp; <i>See</i> our <a href="https://www.oblon.com/the-uspto-issues-press-release-announcing-plans-to-formalize-the-director-review-process">April 22</a> post.</p> <p>Consistent with Director Vidal&rsquo;s efforts to increase transparency and &ldquo;promote consistent and clear PTAB decision-making,&rdquo; on May 26, 2022, the USPTO also announced an interim processes for the review of PTAB decisions, modeled after the decision circulation process used by the Federal Circuit. &nbsp;Full details of the Office&rsquo;s interim process for PTAB decision circulation and internal PTAB review can be found <a href="https://www.uspto.gov/interim-process-ptab-decision-circulation-and-internal-ptab-review?utm_campaign=subscriptioncenter&amp;utm_content=&amp;utm_medium=email&amp;utm_name=&amp;utm_source=govdelivery&amp;utm_term">here.</a></p> <p>The Office also updated its <a href="https://www.uspto.gov/patents/patent-trial-and-appeal-board/interim-process-director-review?utm_campaign=subscriptioncenter&amp;utm_content=&amp;utm_medium=email&amp;utm_name=&amp;utm_source=govdelivery&amp;utm_term">interim process for Director review</a> to ensure that while the USPTO does not accept requests for Director review of institution decisions, the Director continues to retain the authority to review such decisions <i>sua sponte</i> after issuance.</p> <p>Separately, and since Commissioner Hirshfeld was appointed interim Director of the USPTO, there has been curiosity (and potential concern) regarding whether the interim Director actually had the authority to conduct Director reviews (and potentially even issue patents).&nbsp; Perhaps adding fuel to the fire, on May 17, 2022, the USPTO asked the Federal Circuit <i>not</i> to rule on whether Commissioner Hirshfeld had authority to conduct interim Director reviews.&nbsp; Instead, the Office asked the Federal Circuit for a limited remand and to send the <i>Arthrex</i> case back to the agency in order to allow newly-confirmed Director Vidal to decide whether to review the 2018 PTAB decision that rendered unpatentable Arthrex&rsquo;s medical implant device patent.</p> <p>Based on the USPTO&rsquo;s position, the Office arguably thought there was a chance Commissioner Hirshfeld lacked authority to conduct interim Director reviews (and that a number of cases currently on appeal may need to be remanded, including <i>Arthrex</i>); however, the Federal Circuit held today that it was appropriate for Commissioner Hirshfeld to temporarily fill the role of Director while the Office was without a presidentially-appointed nominee:</p> <p style="margin-left: 40px;">In sum, Arthrex&rsquo;s Appointments Clause challenge runs headlong into <i>Eaton</i> and the Supreme Court&rsquo;s prior decision in this case. We therefore conclude that the Commissioner&rsquo;s exercise of the Director&rsquo;s authority while that office was vacant did not violate the Appointments Clause.</p> <p style="margin-left: 40px;">*****</p> <p style="margin-left: 40px;">We [also] hold that the Commissioner&rsquo;s order denying Arthrex&rsquo;s rehearing request on the Director&rsquo;s behalf did not violate the FVRA [Federal Vacancies Reform Act]. The FVRA does not restrict who may perform the delegable functions and duties of an absent PAS [Presidentially appointed, Senate-confirmed] officer. And the Director&rsquo;s authority to decide requests for rehearing Board decisions is delegable.</p> <p>Absent additional <i>en banc</i> or Supreme Court activity in <i>Arthrex</i>, it appears the years-long saga between Arthrex and Smith &amp; Nephew may be nearing its end:</p> <p style="margin-left: 40px;">Arthrex does not persuade us that the Commissioner violated the Appointments Clause, the FVRA, or the Constitution&rsquo;s separation of powers in denying Arthrex&rsquo;s rehearing request. Nor does it identify reversible error in the Board&rsquo;s decision that ElAttrache anticipated the challenged claims of the &rsquo;907 patent. Accordingly, we affirm.&nbsp;</p> Article 27 May 2022 00:00:00 -0800 https://www.oblon.com/?t=40&an=125815&anc=995&format=xml