Publications – Oblon, McClelland, Maier & Neustadt, L.L.P. Intellectual Property Law Firm en-us 22 Mar 2019 00:00:00 -0800 firmwise Delaware District Court Finds Exceptional Case Based on Plaintiff's Opposition To Alice Motion On March 18, 2019, the court in Finnavations LLC v. Payoneer, Inc., No. 1-18-cv-00444, Dkt. No. 35 (D. Del. Mar. 18, 2019) granted defendants&rsquo; motion for exceptional case and awarded defendants attorneys&rsquo; fees. Typically, courts grant exceptional case motions against plaintiffs based on litigation misconduct or clearly unreasonable or unfounded infringement positions. The opinion in Finnavations is notable because the plaintiff&rsquo;s exceptional behavior was based entirely in Finnavations&rsquo; opposition to defendants&rsquo; motion to dismiss the case under 35 U.S.C. &sect; 101. In other words, the court held that by defending the validity of its patent against defendants&rsquo; Alice motion, Finnavations acted objectively unreasonably. <br /> <br /> The facts in Finnavations appear extreme: the patent examiner only allowed the asserted patent after rejecting its claims four times under section 101, the claims as issued are almost indistinguishable from the claims at issue in Alice, and Finnavations&rsquo; briefing was &ldquo;not just mediocre or bad; it was ugly.&rdquo; Opinion at 3, n.2. Based on these facts, Finnavations should have known before filing the case that the patent was likely to be invalidated under Alice. On the other hand, Finnavation&rsquo;s patent was, like all patents, duly issued by the patent office and entitled to a presumption of validity. Based on the opinion, in some cases, asserting a patent with potential validity issues may be exception in and of itself, effectively rendering the patent unenforceable before it is litigated. <br /> <br /> More broadly, the Finnavations opinion underscores the District of Delaware&rsquo;s increased willingness in recent years to grant exceptional case motions. Once rare, exceptional case findings in Delaware after Octane Fitness are no longer uncommon. While the facts in most cases are not as unusual as Finnavations, potential plaintiffs in Delaware should be prepared for the real possibility of attorneys&rsquo; fees if they take litigation positions that could be considered vexatious or unusually weak. <br /> Article 22 Mar 2019 00:00:00 -0800 Is the Canard that the Board Never Makes Credibility Determinations Finally Dead? <p style="text-align: left;">&nbsp; &nbsp; &nbsp; &nbsp; &nbsp;&nbsp;In <u>Winner Int&rsquo;l Royalty Corp.</u> v. <u>Wang</u>, 202 F.3d 1340, 53 USPQ2d 1580 (Fed. Cir. 2000)(&ldquo;<u>Winner</u> v. <u>Wang</u>&rdquo;), a panel of the Federal Circuit asserted that the administrative patent judges (&ldquo;APJs&rdquo;) can never hear and see witnesses under examination and cross-examination and that, accordingly, they cannot make credibility assessments.&nbsp;As I pointed out in Gholz, <u><a href="">The Board Does Hear Live Testimony and Make Credibility Determinations!</a></u>, 18 Intellectual Property Today No. 12 at page 12 (2011), &ldquo;neither party [in <u>Winner</u> v. <u>Wang</u>] asserted that the APJs never hear live testimony or make &lsquo;live credibility assessments.&rsquo;&nbsp;The court came up with those assertions entirely on its own.&rdquo;&nbsp;Id. at page 13 n. 16; emphasis deleted.&nbsp;Moreover, the panel&rsquo;s assertions were factually incorrect as of the day that it made them and, as also pointed out in that article, continued to be contrary to the APJs&rsquo; subsequent practice.&nbsp;Nevertheless, other panels of the Federal Circuit mindlessly repeated what I characterized as <u>Winner</u> v. <u>Wang</u>&rsquo;s &ldquo;canard&rdquo;.</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; In my 2011 article in <u>Intellectual Property Today</u>, I wrote optimistically that &ldquo;It is &hellip; possible that things will be changing in the near future.&rdquo;&nbsp;Id. at page 13.&nbsp;I wrote then that, with the advent of AIA proceedings and the expansion of the number of APJs to include more &ldquo;attorneys from private practice who have experience with the examination and cross-examination of live witnesses in proceedings before courts and other administrative agencies[, i]t is devoutly to be hoped that &hellip; the APJs will begin to hear live testimony (and to make explicit credibility determinations) much more frequently than they have in the past.&rdquo;&nbsp;Id. at 13.</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Well, it&rsquo;s been eight years, which is a lot longer than I hoped in 2011, but things seem to be moving in the direction I hoped that they would back then.&nbsp;In 2014, a panel of the PTAB consisting of APJs Perry, Giannetti, and Ward issued an order in <u>K-40 Electronics, LLC</u> v. <u>Escort, Inc.</u>, IPR2013-00203 (Paper 34), authorizing live testimony at a hearing in an IPR, and in 2019 the powers that be made that order precedential.&nbsp;That order does say that &ldquo;The Board does not envision that live testimony will be necessary at many oral arguments,&rdquo; id. at page 2, and it does not indicate that live testimony will be appropriate in all the situations in which the Standing Order of the board for interferences (quoted in my 2011 article) indicates that it is appropriate, but it is a start.</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Now we must hope that the Article III judges on the Federal Circuit keep their hands off.&nbsp;Since it was their unsolicited dicta that initiated the problem, it is not inconceivable that they will wade back into the situation by holding that what they once wrote is now engraved in stone unless overruled by the Supreme Court or reversed by act of Congress (neither of which remedies are likely to occur).&nbsp;However, there is no reason for them to do that &ndash; and, to paraphrase the ending of my 2011 article, it is devoutly to be hoped that they won&rsquo;t!</p> Article 21 Mar 2019 00:00:00 -0800 PTAB Issues Three New Precedential Opinions <p>The 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.</p> <p>Two of the decisions are related to when live testimony is allowed during oral arguments. The first, <i>K40 Electronics LLC v. Escort Inc.</i>, is an order from 2014 where the Board explains that it &ldquo;does not envision that live testimony will be necessary at many oral arguments&rdquo; but that &ldquo;under very limited circumstances, cross-examination of witnesses may be ordered to take place in the presence of an administrative patent judge.&nbsp;For example, the board may occasionally require live testimony where the board considers the demeanor of a witness critical to assessing credibility.&rdquo;&nbsp;The Board also provided procedural limitations for live testimony, explaining that only cross-examination and redirect are permitted.&nbsp;</p> <p><i>DePuy Synthes Products Inc. v. Medidea LLC</i>, a case from January 2019, confirms that live testimony cannot be new testimony, with the Board declining to allow the inventor to testify at the hearing.&nbsp;The order states that because the inventor did not provide any declaratory evidence, his testimony would be new evidence, impermissible at the oral arguments stage.&nbsp;In other words, only declarants and counsel of record may address the panel during an oral hearing.&nbsp;</p> <p>The third decision, <i> Inc. v. Uniloc Luxembourg SA</i> deals with substitute claims and grounds for challenging a motion to amend.&nbsp;Refer to Oblon&rsquo;s <a href="">post from February 1, 2019</a> for a more detailed discussion of this case.&nbsp;In short, the Board would not let Uniloc amend its claims curing an IPR because the substitute claims were not eligible subject matter under 35 U.S.C. &sect; 101.&nbsp;Although Section 101 cannot be considered during an IPR, the Board is permitted to evaluate proposed amendments under all grounds of patentability, not just based on patents and printed publications. To support this decision, the Board explained that, although 35 U.S.C. &sect; 311 limits a Petition to grounds based only on documentary prior art, &sect; 311 is directed to <i>existing</i> claims.&nbsp;For amended claims, the governing provision is 35 U.S.C. &sect; 316(d), which does not similarly limit the board.&nbsp;This is consistent with other cases where the Board has denied substitution of proposed claim amendments based on indefiniteness.&nbsp;<i>E.g.</i>, <i>Apple Inc. v. Valencell, Inc.</i>, IPR2017-000315 (PTAB May 31, 2018).</p> Article 20 Mar 2019 00:00:00 -0800 Invention by "Another": Duncan Parking Technologies, Inc. v. IPS Group, Inc., Appeal No. 2018-1205, -1360 (Fed. Cir. Jan. 31, 2019) <p>IPS Group Inc. (&ldquo;IPS&rdquo;) 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. (&ldquo;DPT&rdquo;) appealed from a related decision of the Patent Trial and Appeal Board (&ldquo;the Board&rdquo;) in an <i>inter partes </i>review holding that claims 1&ndash;5 and 7&ndash;10 of the &rsquo;310 patent were not shown to be unpatentable as anticipated under 35 U.S.C. &sect; 102(e).</p> <p>The Fed. Circuit reverse the Board&rsquo;s decision that claims 1&ndash;5 and 7&ndash;10 of the &rsquo;310 patent are not unpatentable as anticipated; affirmed the district court&rsquo;s decision granting summary judgmentof noninfringement of the &rsquo;310 patent; vacated the district court&rsquo;s decision granting summary judgment of noninfringement of the &rsquo;054 patent.</p> <p>IPS designs parking meter technology. It is run by founder and CEO Dave King and Chief Technical Officer Alexander Schwarz. The company manufactures multi-space parkingmeters and it has changed its focus to cellular phone technology. King conceived the idea for a credit-card enabled, solar-powered, single-space parking meter. Schwarz&rsquo;s&rsquo;s inventive contribution was to the development of how the various electrical components of the meter are interconnected and operate together.</p> <p>The &rsquo;310 and &rsquo;054 patents are similar but do not have the same specifications. The &rsquo;054 patent issued in 2013 from a PCT application filed on December 4, 2006, naming King and Schwarz as the inventors. It claims a credit card-enabled, solar-powered, single-space parking meter device that can be used to retrofit the internal components of existing parking meters. The &rsquo;310 patent issued in 2010 from an application filed on February 27, 2008, more than a year after the &rsquo;054 patent&rsquo;s application had been filed, naming as the inventors King and three engineers but not Schwarz. It claims a credit card-enabled, solar-powered, single-space parking meter.</p> <p>IPS filed a complaint against DPT in the Southern District of California asserting infringement of the &rsquo;054 and &rsquo;310 patents. DPT petitioned in the Board for <i>inter partes </i>review of claims 1&ndash;5 and 7&ndash;10 of the &rsquo;310 patent. The Board instituted a review on the ground that the &rsquo;054 patent anticipates the &rsquo;310 patent under 35 U.S.C. &sect; 102(e). After the institution, IPS did not dispute whether, on the merits, the &rsquo;054 patent anticipates the &rsquo;310 patent claims. IPS instead argued in its Patent Owner Response that the anticipating portions of the &rsquo;054 patent were solely King&rsquo;s invention, not that &ldquo;of another&rdquo; under 35 U.S.C. &sect; 102(e), and therefore cannot be applied as prior art against the &rsquo;310 patent claims. The PTAB agreed with IPS that the claims were not unpatentable.</p> <p>DPT appealed from the Board&rsquo;s decision, and IPS appealed from the district court&rsquo;s summary judgments of noninfringement.</p> <p>DPT argued in the Appeal that Schwarz was a joint inventor of the relevant portions of the &rsquo;054 patent because he conceived the electrical system depicted in Figure 8. Thus, DPT contended that the &rsquo;310 patent claims were anticipated by the &rsquo;054 patent. In addition, DPT argued that the Board abused its discretion by denying DPT&rsquo;s motion for additional discovery of documents that concern the invention of the relevant portions of the &rsquo;054 patent.</p> <p>IPS responded that Schwarz&rsquo;s drawing the block diagram does not mean that he conceived the relevant electronics, and that &ldquo;Schwarz&rsquo;s conception of aspects of Figure 8 not recited in the &rsquo;310 claims is irrelevant.&rdquo; IPS further argued that the fact that &ldquo;King communicated his idea in terms of the &lsquo;general&rsquo; connectivity of certain components does not matter since that merely reflects the connectivity of those components as recited in the &rsquo;310 claims.&rdquo; IPS did not dispute the Board&rsquo;s finding that the &rsquo;054 patent would anticipate the &rsquo;310 patent claims if it were prior art.</p> <p>&nbsp;</p> <p>The Fed. Circuit agreed with DPT that the &rsquo;054 patent anticipated the challenged claims of the &rsquo;310 patent. The Board clearly erred in concluding otherwise. &ldquo;A patent is anticipated under 35 U.S.C. &sect; 102(e) if &lsquo;the invention was described in . . . a patent granted on an application forpatent <i>by another </i>filed in the United States before the invention by the applicant for patent.&rsquo;&rdquo;</p> <p>The question on appeal was &ldquo;whether the Board erred in concluding that the applied portions of the &rsquo;054 patent were invented by King alone and not by King and Schwarz jointly. If Schwarz is a joint inventor of the anticipating disclosure, then it is &ldquo;by another&rdquo; for the purposes of &sect;102(e).&rdquo;</p> <p>To be a joint inventor, one must: (1) contribute in some significant manner to the conception or reduction to practice of the invention, (2) make a contribution to the claimed invention that is not insignificant in quality, when that contribution is measured against the dimension of the full invention, and (3) do more than merely explain to the real inventors well-known concepts and/or the current state of the art.</p> <p>DPT relied on the &rsquo;054 patent&rsquo;s disclosure of a specific parking meter device, depicted in the figures and described in detail in the specification. IPS did not dispute that the &rsquo;054 patent&rsquo;s embodiment disclosed all of the limitations of the &rsquo;310 patent claims at issue. On appeal, DPT relied on Figure 8, a block diagram depicting the embodiment&rsquo;s electrical system, as anticipatory prior art &ldquo;by another&rdquo; disclosing the electrical connections and components claimed in the &rsquo;310 patent. Figure 8 discloses each of the electrical components claimed in the &rsquo;310 patent, along with a detailed diagram showing how each component is connected.</p> <p>The Court noted that it was clear that Schwarz conceived much of the &rsquo;054 patent&rsquo;s electrical system, including designing the diagram showing how all the electronic components are connected. Schwarz invented &ldquo;how the various electrical components of the meter are interconnected and operate together.&rdquo; Schwarz&rsquo;s contribution to the invention defined by the&rsquo;310 patent claims, as disclosed in the &rsquo;054 patent, was significant in light of the invention as a whole. While IPS argued that Schwarz&rsquo;s role consisted of &ldquo;drawing a schematic,&rdquo; &ldquo;the record showed that creating the block diagram was not a minor task.&rdquo; As a result of Schwarz&rsquo;s contribution, the &rsquo;054 patent discloses a parking meter device with a detailed electrical system, a challenge King described as one of &ldquo;two big hurdles&rdquo; to the invention. Thus, Schwarz&rsquo;s contribution, measured against the dimension of the full invention, was significant.</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Further, the &rsquo;054 patent&rsquo;s parking meter device, its sole embodiment, contains the specific electrical system disclosed in Figure 8. As the Board found, Schwarz conceived, at the very least, some aspects of that electrical system which are required by the electrical system limitations of the &rsquo;310 patent claims. The record indicates that these aspects of the electrical system were a significant contribution to the invention claimed in the &rsquo;310 patent. Thus, the anticipating embodiment was the joint invention of King and Schwarz, an inventive entity different from that of the &rsquo;310 patent, and the &rsquo;054 patent is prior art under 35 U.S.C. &sect; 102(e).</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; The Court concluded that &ldquo;[s]ince IPS does not dispute the Board&rsquo;s finding that this embodiment discloses every limitation of claims 1&ndash;5 and 7&ndash;10, we hold those claims of the &rsquo;310 patent unpatentable as anticipated.&rdquo;</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; In some instances, company&rsquo;s own earlier patents could be applied as prior art during examination of or to challenge later patents. It is important to consider sets of inventors to avoid problems when company&rsquo;s earlier patents could become prior art &ldquo;by another&rdquo; to the claims in later applications/patents.&nbsp;</p> Article 19 Mar 2019 00:00:00 -0800 PTAB Precedential Opinion Panel Clarifies Issue Joinder Under 35 U.S.C. § 315(c) <p>In the first case to be taken up by the PTAB&rsquo;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.</p> <p>In <i>Proppant Express Invs., LLC et al. v. Oren Tech., LLC</i>, petitioners filed an otherwise time-barred IPR petition and motion for joinder in an effort to join their original, partially-instituted IPR to correct an error in their analysis for claim 4. This motion was denied because the original panel concluded that &ldquo;35 U.S.C. &sect; 315(c) [provides] authority to join only other parties to existing proceedings without introducing new issues of patentability,&rdquo; and petitioners&rsquo; request ran contrary to both requirements. Petitioners requested rehearing, which was granted and submitted to the POP for consideration of the following questions:</p> <p style="margin-left: 40px;">1.&nbsp; &nbsp; &nbsp; Under 35 U.S.C. &sect; 315(c) may a petitioner be joined to a proceeding in which it is already a party?</p> <p style="margin-left: 40px;">2.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Does 35 U.S.C. &sect; 315(c) permit joinder of new issues into an existing proceeding?</p> <p style="margin-left: 40px;">3.&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Does the existence of a time bar under 35 U.S.C. &sect; 315(b), or any other relevant facts, have any impact on the first two questions?</p> <p>&nbsp;The answer to each was yes:</p> <p style="margin-left: 40px;">As to the first two issues, we conclude that 35 U.S.C. &sect; 315(c) provides discretion to allow a petitioner to be joined to a proceeding in which it is already a party and provides discretion to allow joinder of new issues into an existing proceeding. We further conclude that the existence of a time bar under 35 U.S.C. &sect; 315(b) is one of several factors that may be considered when exercising our discretion under &sect; 315(c).</p> <p>The POP went on to conclude that the PTAB should exercise its discretion to allow issue joinder &ldquo;only in limited circumstances&mdash;namely, where fairness requires it and to avoid undue prejudice to a party.&rdquo; These considerations may dictate an acceptable use of issue joinder when, for example, a patent owner adds newly asserted claims after petitioner&rsquo;s time period for requesting IPR has expired.</p> <p>In contrast, the POP noted that it &ldquo;does not generally expect fairness and prejudice concerns to be implicated by, for example, the mistake or omissions of a petitioner.&rdquo; The conduct of the parties and attempts to game the system may also be considered as part of the PTAB&rsquo;s case-by-case joinder analysis. Similarly, the POP explained that &ldquo;the stage and schedule of an existing <i>inter partes </i>review might make joinder to that proceeding inappropriate,&rdquo; and that consideration of the PTAB&rsquo;s <i>General Plastic</i> factors for discretionary denials of institution under 35 U.S.C. &sect; 314(a) may also be appropriate in the joinder context.</p> <p>As to the specific request for joinder in this case, petitioners&rsquo; motion was denied because &ldquo;Petitioner&rsquo;s own conduct created the need for it to request joinder, [and thus,] this case does not involve one of the limited circumstances in which the Board will exercise its discretion to allow same party and/or issue joinder.&rdquo; Similarly, the POP explained that allowing joinder in cases such as this, where the joinder motion and IPR petition are filed outside of petitioner&rsquo;s one-year-IPR-filing window, &ldquo;could effectively vitiate the time limitation of &sect; 315(b) and obviate the careful balance the statute and legislative history contemplate.&rdquo;</p> <p>For those that have been practicing before the PTAB since its inception, it is quite encouraging to see the newly created POP provide resolution and uniformity on an issue that, although it doesn&rsquo;t arise all that often, was receiving panel-dependent treatment when a consistent voice was needed. Now, the law of the PTAB is clear, at least until this issue works its way to the Federal Circuit. The POP&rsquo;s analysis is largely based upon statutory interpretation and, thus, despite this issue being directed to discretionary institution practices, we expect that the Federal Circuit will find this issue reviewable under the Supreme Court&rsquo;s <i>Cuozzo </i>decision and the Federal Circuit&rsquo;s <i>en banc Wi-Fi One</i> decision.</p> <p>But so long as <i>Proppant Express</i> remains good law, we expect the PTAB to police issue joinder carefully, denying requests in response to petitioner gamesmanship or a self-inflicted need for a second bite of the apple, and granting requests when the equities suggest that the original petitioner (or perhaps a third-party requesting joinder) should be able to expand the scope of the originally instituted proceeding.</p> <p>And while <i>SAS</i> may have lessened the need for petitioners to attempt issue joinder to rehabilitate partially-denied grounds/arguments (which would likely be denied anyway under <i>Proppant Express</i>), the potential ability to add newly asserted claims to an instituted IPR, particularly if those claims are asserted by patent owner after petitioners&rsquo; one-year-filing window, is a useful tool for petitioners.&nbsp;</p> Article 14 Mar 2019 00:00:00 -0800 Sameer Gokhale featured in The Journal of Robotics, Artificial Intelligence & Law 03.2019.pdf&anc=995&format=xml Sameer Gokhale wrote an article for <em>The Journal of Robotics, Artificial Intelligence and Law</em> entitled: &quot;Patent Issues for AI and Factory Automation Inventions.&quot; Article 12 Mar 2019 00:00:00 -0800 03.2019.pdf&anc=995&format=xml Biologic Patent Transparency Act - New Bill Aimed at Biologics <p>A bipartisan group of senators sponsored a bill this week&mdash;the Biologic Patent Transparency Act, S. 659&mdash;aimed at making patent information associated with biologics easier to identify and easing the approval process for biosimilar manufacturers encountering patent roadblocks.</p> <p>The bill tracks some key provisions of the Hatch-Waxman Act. Notably, it requires the holders of an approved biologic product to submit a list of patents associated with the biologic within 30 days of approval.&nbsp;If a new patent is issued, the list must be updated within 30 days.&nbsp;And, the bill would apply retroactively: within 30 days of enactment, the holders of previously-approved biologic products must submit patent lists.&nbsp;The patents required to be disclosed are those for which the holder believes a claim of patent infringement could reasonably be asserted.&nbsp;This is notably broader than the equivalent requirement in the Hatch-Waxman Act, as it includes manufacturing processes as well.&nbsp;If a patent is not timely included in the list, the holder is barred from filing an infringement suit based on that patent.</p> <p>The bill also specifies actions the FDA must undertake to make this patent information available to the public, namely, to transform the Purple Book into a searchable, useable database similar to the Orange Book within one year of the bill&rsquo;s enactment.&nbsp;While the Purple Book currently lists biological products and any biosimilar and interchangeable biological products, the bill would require substantial additional information, including the official and proprietary name of each biologic product, each patent submitted in accordance with the act, the date of licensure and application number for each product, the marketing status, dosage form, route of administration, reference product if applicable, and any period of exclusivity associated with the product.</p> <p>The bill is ostensibly designed to help reduce patent thickets associated with biologics and help promote competition in the marketplace.&nbsp;The senators behind the bill specifically noted that the legislation is an attempt to stop patent gaming that blocks consumers from accessing lower-cost biologics.</p> <p>Commentators have noted the bill is contradictory to the so-called patent dance of the BPCIA.&nbsp;But, when the bill goes to committee, changes may be proposed to both bills to bring them into accord before the bill is enacted (if ever).</p> Article 12 Mar 2019 00:00:00 -0800 Motions to Amend: Is the PTAB's Lectrosonics Order Just of Western Digital? <p>&nbsp; &nbsp; &nbsp; &nbsp; &nbsp; Spring gardening season has begun and the USPTO is once again planting its Motion to Amend<br /> <br /> (&ldquo;MTA&rdquo;) seeds. In a substantial redux of <i>Western Digital Corporation v. Spex Technologies, </i>IPR2018-00082,<br /> <br /> -00084, paper 13, the PTAB this past week designated paper 15 of <i>Lectrosonics v. Zaxcom</i>, IPR2018-<br /> <br /> 01129, 01130<i>(&ldquo;Lectrosonics </i>Order&rdquo;) as an informative decision.&nbsp;<br /> &nbsp;</p> <p style="margin-left: 40px;">As you may recall, the PTAB explained in <i>Western Digital</i> that:</p> <p style="margin-left: 80px;">once a proposed claim includes amendments to address a prior art grounds in the trial, a patent owner also may include additional limitations to address potential &sect; 101 or &sect; 112 issues, if necessary. Allowing an amendment to address such issues, when a given claim is being amended already in view of a 35 U.S.C.&sect; 102 or &sect; 103 ground, serves the public interest by helping to ensure the patentability of amended claims.</p> <p>What&rsquo;s new in the <i>Lectrosonics</i> Order? A panel consisting or acting chief administrative patent judge, <br /> <br /> Scott Boalick, and administrative patent judges Kalyan Deshpande and Lynne Pettigrew clarify what <br /> <br /> constitutes impermissible enlargement in an MTA. Consistent with longstanding reissue practice, <br /> <br /> the PTAB makes that clear:</p> <p style="margin-left: 80px;">A patent owner may not seek to broaden a challenged claim in any respect that enlarges the scope of the claims of the patent, for example, in the name of responding to an alleged ground of unpatentability. Likewise, a proposed substitute claim may not remove a feature of the claim in a manner that broadens the scope of the claims of the challenged patent &hellip;. [A] proposed substitute claim adding a novel and nonobvious feature or combination to avoid the prior art in an instituted ground of unpatentability will not enlarge the scope of the claims of the patent.</p> <p>&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; Although patent owners are free to present proposed substitute claims to address potential prior<br /> <br /> art, &sect; 101 or &sect; 112 issues, any claim change should at least be clarifying in nature if not presented in the<br /> <br /> form of a clearly narrowing amendment which meets the &ldquo;novel and non-obvious feature&rdquo; standard <br /> <br /> articulated in the <i>Lectrosonics</i> Order.&nbsp;If the latter, patent owners should remain mindful that claim features<br /> <br /> proposed in an MTA will be construed using the same claim construction standard that would be used to<br /> <br /> construe the claim in a civil action under 35 U.S.C. 282(b), including construing the claim in accordance<br /> <br /> with (i) the ordinary and customary meanings of such claim as understood by one of ordinary skill in the <br /> <br /> art and (ii) the prosecution history pertaining to the patent. This approach to claim interpretation may<br /> <br /> prove challenging for the PTAB where proposed claim amendments have no ordinary meaning and the <br /> <br /> prosecution history sheds no additional light.</p> <p style="margin-left: 40px;">Despite shifting the burden of proof to petitioners, <i>Aqua Products</i> has not appreciably improved the </p> <p>success of motions to amend. The PTAB under the direction of Director Iancu continues to pursue a <br /> <br /> system which provides patent owners a more robust claim amendment opportunity. However, patent <br /> <br /> owners will still be well served to maintain pending applications for important patent portfolios and utilize<br /> <br /> <i>ex parte</i> reexam and reissue as tools to buttress claim scope prior to asserting a patent or seeking a <br /> <br /> license.&nbsp;</p> Article 11 Mar 2019 00:00:00 -0800 US Perspectives: In US, No Remedies For Growing IP Infringments Watch_02_state infringements.pdf&anc=995&format=xml Brian Darville is quoted in an <em>Intellectual Property Watch</em> article entitled: &quot;US Perspectives: In US, No Remedies For Growing IP Infringements.&quot;&nbsp; Article 04 Mar 2019 00:00:00 -0800 Watch_02_state infringements.pdf&anc=995&format=xml Onyx v. Cipla: Companies Beware - What Your Patent Agent Tells You May Not Be Privileged <p>In an order last month, the Delaware district court ruled that some communications involving Onyx&rsquo;s patent agent were not privileged and must be produced to Cipla. The court&rsquo;s order highlights potential pitfalls when relying upon advice solely from patent agents.&nbsp;</p> <p>By way of background, the attorney-client privilege protects communications between attorneys and clients from compelled disclosure during litigation.&nbsp;For a communication to be privileged, there must be (1) a communication (2) made between privileged persons (3) in confidence (4) for the purpose of obtaining or providing legal assistance for the client.&nbsp;The Federal Circuit has recognized a privilege between non-attorney patent agents and their clients. &nbsp;<i>See In re Queen 's U at Kingston </i>(Fed. Cir. 2016) (&ldquo;<i>In re Queens</i>&rdquo;).</p> <p>The Delaware court noted that the privilege between patent agents and their clients is narrow, covering only communications &ldquo;reasonably necessary and incident to&rdquo; prosecuting patents at the United States Patent and Trademark Office (&ldquo;USPTO&rdquo;).&nbsp;The court provided examples of patent agent communications not covered by the privilege, stating that &ldquo;communications with a patent agent who is offering an opinion on the validity of another party's patent in contemplation of litigation or for the sale or purchase of a patent, or on infringement&quot; are not covered.</p> <p>In <i>Onyx</i>, the court addressed communications involving &ldquo;scientists who identified potential</p> <p>alternative formulations and - before finalizing a research plan, before undertaking testing or viability studies, before reducing their ultimate invention to practice, and well before they committed to having claims drafted so a patent application could be prosecuted - consulted a patent agent for guidance, evidently for assistance in understanding the patent landscape in order to direct their efforts toward results that were not already the subject of prior art claims.&rdquo;&nbsp;The court determined that such communications were not &ldquo;reasonably necessary and incident to&rdquo; patent prosecution and, thus, not privileged because the communications were &ldquo;part of a plan to develop new chemical formulations, not to seek patent protection for already-developed formulations.&rdquo;</p> <p>Did the Delaware court apply the privilege too narrowly?&nbsp;</p> <p>As noted in <i>In re Queens</i>, the U.S. Supreme Court (in its 1963 <i>Sperry v. Florida</i> decision) expressly found that the preparation and prosecution of patent applications by patent agents constitutes the practice of law, which &ldquo;inevitably requires the practitioner to consider and advise his clients as to the patentability of their inventions under the statutory criteria of 35 U.S.C.&hellip;&rdquo;</p> <p>Further, the Federal Circuit in <i>In re Queens</i> noted that the scope of a patent agent&rsquo;s ability to practice before the USPTO is at least partially defined by 37 C.F.R. &sect; 11.5(b) which provides that such practice &ldquo;includes, but is not limited to, preparing and prosecuting any patent application, consulting with or giving advice to a client in contemplation of filing a patent application or other document with the Office&hellip;&rdquo;</p> <p>So, according to the Supreme Court and Federal regulations, a patent agent&rsquo;s communications relating to patentability of an invention, including communications made &ldquo;in contemplation of&rdquo; filing a patent application, should be privileged.&nbsp;</p> <p>But this is arguably not what happened in <i>Onyx</i>.&nbsp;The Delaware court ruled that communications which were &ldquo;part of a plan to develop new chemical formulations, not to seek patent protection for already-developed formulations&rdquo; were not privileged.&nbsp;But why is a patent landscape analysis (presumably to determine patentability of future research) not covered by the privilege?&nbsp;Wouldn&rsquo;t such an analysis be performed &ldquo;in contemplation of&rdquo; filing a patent application?&nbsp;Wouldn&rsquo;t it make sense in certain circumstances to perform a patentability study prior to conducting research so that time, money and effort were not wasted on research that would not be subject to patent protection?&nbsp;Why would a formulation have to be &ldquo;already-developed&rdquo; to render patent agent communications about the formulation privileged?</p> <p>Admittedly, we do not know exactly what the non-privileged communications in <i>Onyx</i> were, so particular language in Onyx&rsquo;s documents may have led to the Delware court&rsquo;s decision.&nbsp;But what we do know is that the privilege for a patent agent&rsquo;s communications is narrow, and the Delaware court&rsquo;s decision highlights potential problems with relying solely upon advice from a patent agent. &nbsp; &nbsp;</p> Article 04 Mar 2019 00:00:00 -0800