The Post-Grant Strategist

You found a great prior art reference for your IPR petition. But if that reference isn’t a patent or patent application, you’ll need to think carefully about how to prove that the reference was actually published and available to the interested public. As the PTAB has reminded litigants time and time again, failing to connect all the dots from the author’s creation of the reference all the way to its availability to the interested public might doom the petition.

In September 2018, the Patent Office created the Precedential Opinion Panel (or “POP”) to increase transparency and predictability of proceedings before the PTAB by establishing precedent that would guide all PTAB judges. In March 2019, the POP released its first opinion, which held that the PTAB may, in limited circumstances, join both a petitioner to a proceeding in which it is already a party and join new issues to an existing proceeding.

In the 2017 precedential decision General Plastic Co. v. Canon Kabushiki Kaisha, the PTAB established a set of seven non-exclusive factors  that it will consider in exercising its discretion under 35 U.S.C. § 314(a) to deny follow-on petitions. Two recent PTAB decisions analyzing General Plastic suggest a lack of redundancy between the petitions may not be enough to justify instituting a follow-on petition.  Instead, a primary consideration guiding the PTAB may be whether the petitioner could have raised the arguments in an earlier-filed petition.

While the Board recognizes that its rules do not require petitioners to take “positions consistent with related cases in different fora,” a recent IPR decision illustrates the risks a petitioner faces when it advances claim construction positions before the Board that are inconsistent with its positions in related district court proceedings.

In the wake of SAS Institute v. Iancu, the PTAB has sometimes expanded pending IPRs to include previously un-instituted grounds. But can the PTAB rely on SAS to retroactively deny institution? A recent decision says yes, in at least some circumstances. And while the facts of this case are unusual, it nevertheless demonstrates that petitioners should be cautious when relying on SAS to try to induce the PTAB to reconsider grounds that it didn’t originally find persuasive.

This past year, the Supreme Court in SAS Institute v. Iancu held that once the PTAB institutes an IPR trial its subsequent final written decision must address all claims challenged in the petition. The Court explained that its holding was compelled by a plain reading of 35 U.S.C. § 318(a), which states that the PTAB must issue a final written decision on “any patent claim challenged by the petitioner.” SAS Institute did not decide, however, whether the PTAB’s final written decisions must also address all grounds raised in a petition. The Federal Circuit has subsequently provided a clearer answer.

One strategy that a patent owner can pursue in an IPR trial is to file a motion to amend seeking to replace one or more of the challenged claims with substitute claims that neither enlarge the scope of the claims nor introduce new subject matter. When a patent owner files such a motion, the petitioner is permitted to oppose the motion and argue why the substitute claims are not patentable. In a recent decision, the Board reaffirmed that the grounds available for a petitioner to attack the patentability of substitute claims are not limited to anticipation or obviousness, but rather can include other sections under the Patent Statute, including § 101.

Section 311(b) of the American Invents Act (“AIA”) provides that a petitioner may request cancellation of one or more claims of a patent “only on a ground that could be raised under section 102 and 103 and only on the basis of prior art consisting of patents or printed publications.” In light of this clear restriction on the evidence that can lead to the cancellation of a claim, one might reasonably assume that all of the petitioner’s evidence during that trial must be prior art. A recent decision from the Federal Circuit, however, shows that this assumption is not entirely correct. Rather, in some situations, the cancellation of a claim may turn on evidence that is not even prior art to the claim.

A hallmark of IPR proceedings is that the petitioner—not the patent owner—has the burden to prove that the challenged claims are unpatentable. This hallmark is statutory as section 316(e) of the American Invents Act (which created IPRs) provides that “the petitioner shall have the burden of proving a proposition of unpatentability.” And yet, a recent decision from the Federal Circuit confirms IPR nonetheless applies the traditional rule that can shift a burden to the patent owner to rebut the petitioner’s prima facie case of obviousness. Patent owners thus cannot blindly rely upon section 316(e) and, in certain circumstances, should consider submitting evidence to defend the claims.

As we have previously discussed, some petitioners for IPR are not able to appeal an adverse decision by the PTAB because they lack constitutional standing. Though Article III standing is not required to file an IPR petition, because it does not apply to administrative proceedings, standing is required to bring a case in Federal court—including an appeal to the Federal Circuit. Several recent decisions have further clarified this standing requirement and give good reason to continue to follow the issue.