Nothing has dominated the U.S. Patent and Trademark Office (PTAB) world like the Arthrex decision. Since October 2019, we have posted seven times about Arthrex and its progeny decisions. Now comes more.

On October 13, the U.S. Supreme Court granted certiorari in case numbers:

19-1434    United States v. Arthrex, Inc., et al.

19-1452    Smith & Nephew, Inc., et al. v. Arthrex, Inc., et al.

19-1458    Arthrex, Inc. v. Smith & Nephew, Inc., et al.

The questions accepted for review are as follows:

  1. Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the PTAB are “principal officers” who must be appointed by the President with the Senate’s advice and consent, or “inferior officers” whose appointment Congress has permissibly vested in a department head.
  2. Whether, if administrative patent judges are principal officers, the Court of Appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.

Network-1 Technologies, Inc. v. Hewlett-Packard Co., Appeal Nos. 2018-2338, -2339, -2395, -2396 (Fed. Cir., September 24, 2020).

Hewlett-Packard (HP) joined an IPR instituted by Avaya against Network-1’s ‘930 patent. HP only sought inter partes review on the grounds asserted by Avaya, which was obviousness based on two references. Network-1 prevailed in the IPR.

In the ‘930 infringement action brought by Network-1 against HP, HP sought to raise an obviousness argument based on references different from those in the Avaya IPR. The district court held that HP was estopped from relying on the different references under 35 USC §315.

Upon review, the Federal Circuit vacated the district court’s estoppel determination. Since HP came in by way of joinder, it was limited to the grounds presented by Avaya in the already-instituted IPR. No other grounds “reasonably could have been raised” by HP in the Avaya IPR, and thus section 315 of the statute would not extend estoppel beyond the two references in the Avaya IPR. Slip op. at 19-20.

USPTO Director Andrei Iancu recently issued a memorandum to the PTAB titled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Review under § 311.” Relying on Section 311, the memorandum permits the use of Applicant Statements in IPRs, but not as a substitute for prior art patents and printed publications. Thus, Applicant Statements alone are not sufficient to form a basis for IPR institution. Rather, Applicant Statements can be used as evidence of the general knowledge in the art, as long as used in conjunction with prior art. Continue Reading The Director’s Guidance on Applicant Statements

GRÜNENTHAL GMBH v. ANTECIP BIOVENTURES II LLC, PGR2019-00026, -00027, 00028 (PTAB, July 28, 2020)

The PTAB issued decisions in a trio of post-grant reviews. One of the defenses put forward by the Patent Owner was that the asserted references did not qualify as printed publications. The analyses by the PTAB is largely the same in each decision, and therefore only PGR2019-00026 will be cited.

Patent Owner contended the Petitioner had not established that the references were publicly available. Petitioner relied upon dates set forth in the references themselves and a declaration from a technical expert who testified on availability of the references. Slip op. at 20. Patent owner contended that the dates in the references are not enough on their own to establish public availability, but did not provide any evidence that contradicted Petitioner’s evidentiary showing. Slip op. at 20-21. Ultimately, the PTAB sided with the Petitioner, and held that that a preponderance of the evidence showed that the references were prior art printed publications. Slip op. at 22.

Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc., Appeal No. 2019-1686 (Fed. Cir., July 22, 2020).

Uniloc owned a patent entitled “System and Method for Adjustable Licensing of Digital Products.” In an IPR, petitioners Hulu and Netflix successfully challenged Uniloc’s claims. Uniloc, however, also filed a motion to amend to add substitute claims. Petitioner Hulu challenged the substitute claims under section 101 grounds.

Uniloc responded by arguing that Hulu could not raise section 101 in an IPR, but did not address Hulu’s arguments on the merits. Ultimately, the PTAB determined that the substitute claims were patent ineligible on Section 101 grounds and denied Uniloc’s motion to amend. Continue Reading Section 101 Plays a Role in IPRs

Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, IPR2018-00600 (July 6, 2020)
Designated Precedential on July 6, 2020

Petitioner Hunting Titan challenged Patent Owner Dynaenergetics’ claims based upon anticipation and obviousness. During the trial, Patent Owner filed a motion to present substitute claims. Petitioner opposed the substitute claims, but only presented arguments based upon obviousness. Continue Reading IPR Decisions Are to Rely on the Adversarial Process

In re Boloro Global Ltd., Appeal Nos. 2019-2349, -2351 and -2353 (Fed. Cir., July 7, 2020).

Boloro appealed to the PTAB final rejections in three patent applications, which the PTAB ultimately affirmed. On appeal of the PTAB decisions to the Federal Circuit, Boloro moved to vacate the PTAB decisions and remand the appeals to different panels of the PTAB.

The Director opposed the motions to vacate and remand on the grounds that the Director “possesses ‘complete control over initial examination’ and could at any time prior to the Board proceedings have directed the issuance of Boloro’s patents but did not, consistent with the Board’s subsequent decisions.” Slip op. at 2-3. The Federal Circuit was not persuaded and granted Boloro’s motions. The court noted that the Director conceded that the APJ’s appointed were unconstitutional, and thus the was no basis to depart from the general rule. Accordingly, no matter the type of proceeding, any PTAB decision issued before Arthrex and under appeal is subject to vacatur and remand.

DTN, LLC v. Farms Technology, LLC,  IPR2018-01412, -01525 (June 14, 2019)

On June 11, 2020, the PTAB designated as precedential its 2019 decision in  DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of the obligation to file agreements with the Patent Office under 35 U.S.C. §317(b) when seeking a termination.

The statute reads as follows:

Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause. Continue Reading The Obligation to Submit Agreements in IPRs Is Broad

General Electric Co. v. Raytheon Technologies Corporation, fka United Technologies Corporation, Case No. 19-1012.

On February 24, 2020, we reported on GE’s petition for certiorari to the Supreme Court. The petition sought review of the Federal Circuit’s doctrine on Article III standing for petitioners to appeal IPR decisions, which essentially required a possibility of an infringement suit against the petitioner. The petition was based in large part on Federal Circuit Judge Todd Hughes’ views that the Federal Circuit applied too strict a standard.

On May 26, 2020, the Supreme Court denied the petition for certiorari.

On May 27, 2020, the Federal Register published proposed rule changes to trial procedures before the PTAB. The rule changes address and codify the following:

(1) Institution will be on all challenged claims or none, and on all asserted grounds if there is institution;

(2) Permit sur-replies to principal briefs, and response and replies to decisions on institution; and

(3) Eliminate the presumption in favor of the petitioner at the institution phase for a genuine issue of material fact created by testimonial evidence submitted in a preliminary response from a patent owner.

Comments to the rules must be received by the USPTO by June 26, 2020.

The rules are published at 85 FR 31728 (May 27, 2020), and can accessed here.