The Post-Grant Strategist

Typically, the PTAB and district courts apply different claim construction standards, which can cause the two forums to construe the same term from the same patent differently. Such divergent treatment occurred in a recent PTAB decision, Mylan Pharmaceuticals Inc. v. Janssen Oncology, Inc. (IPR2016-01332). In Mylan, the PTAB’s claim interpretation of the term “treatment” differed from the district court’s interpretation of the same term in co-pending litigation. The Mylan decision illustrates the divide between the two forums’ claim construction standards and the consequences that those different standards can have on an IPR.

A recent Federal Circuit decision illustrates the dangers of construing claims too broadly when applying the “broadest reasonable interpretation” (BRI) standard. Petitioners especially must remember that the BRI of a term must be “reasonable” in light of the specification. Relying on broad constructions that fail to account for narrowing language in the specification can lead to defeat.

As we have written previously, the PTAB is very active in defining what is and is not a printed publication, and what the PTAB decides can make or break the IPR. A recent decision illustrates yet again the pitfalls that petitioners can face when attempting to prove that a reference is a printed publication. In IPR2016-01614, the petitioner cited a drug label as a printed publication, and though it had a copyright date, the PTAB wanted to see more than just what was on the face of the label.

A recent district court decision illustrates that petitioners should think carefully about requesting IPRs of claims that they may challenge as indefinite in litigation. Indefiniteness challenges are not permitted during an IPR. However, a PTAB decision during IPR may influence a district court’s ruling on an indefiniteness challenge raised in the litigation.

Two recent events will drive big changes in ongoing and future post-grant trials (IPR, PGR and CBM). The PTAB has just announced that it intends to abandon the “broadest reasonable” claim interpretation standard in favor of the “plain and ordinary meaning” standard used in district court litigation. This change mutes what has historically been an important advantage for petitioners: the ability to challenge the validity of claims based on a claim construction that (a) made it easier to show invalidity than the claim construction standard used in court; (b) did not require the petitioner to commit to a claim construction applicable to an infringement trial; and (c) allowed the petitioner to use the patent owner’s assertion of broad claim scope against it, even if the petitioner contested that claim scope in court. The change could go into effect as early as July 8, and would apply to pending as well as future post-grant trials.

As discussed in our prior post, the Supreme Court is poised to issue decisions in two cases about IPRs. The first case is Oil States Energy Services v. Greene’s Energy Group, which could eliminate IPRs and gut the PTAB role in reviewing issued patents. The second case, SAS Institute Inc. v. Iancu, could balloon the PTAB’s workload with new requirements. Although SAS has not garnered the limelight like Oil States, its potential to reshape IPRs is just as significant. The issue at stake—the propriety of the PTAB’s practice of instituting review on only some of the challenged claims rather than all of the challenged claims—does not threaten to eliminate IPRs entirely. SAS does, however, raise the possibility of a dramatic change in how IPRs occur, how they are reviewed in the courts, and how they affect litigation. 

The Supreme Court is poised to issue decisions in two IPR-related cases that some predict will end IPRs as we know them. One of the cases, Oil States Energy Services v. Greene's Energy Group, could eliminate IPRs and gut the PTAB’s role in reviewing issued patents. The other case, SAS Institute Inc. v. Iancu, could balloon the PTAB’s workload and could expose those requesting review of patents to greater risk if they fail to fully make their case.

As with all prophecies of the end (so far), prophesies of the end of IPRs could also be premature, as the Supreme Court could simply allow IPRs to continue in their current form. Read on for a brief refresher on the context of Oil States, and stay tuned for a preview of SAS. We will also cover the decisions as they come down, so be sure to subscribe to get the latest news. 

In DSS Technology Management v. Apple, the Federal Circuit reversed a holding of unpatentability of claims that the PTAB considered plainly obvious in an IPR. The Federal Circuit found that merely stating that the claims were obvious did not fill a gap in the case of obviousness, such that the PTAB had failed to provide a sufficient explanation for its conclusion. The Federal Circuit then reversed the finding of obviousness (rather than remanding for the PTAB to elaborate), reasoning that there was insufficient evidence in the record to enable the PTAB to offer an adequate explanation—leaving the claims intact.

A recent PTAB decision highlights the difficulty of persuading the Board to allow live testimony from an expert during post-grant proceedings. In IPR2017-00433, the PTAB denied patent owner Polaris Industries Inc.’s motion for the live testimony of an expert, even as it acknowledged that his credibility was at issue.

The PTAB recently signaled a warning to petitioners about the dangers of third party submissions made during patent prosecution—even during prosecution of a separate but related patent. For patent holders, this warning serves as an opportunity to protect their patents in similar situations. In PGR2017-00038, Live Nation Entertainment, Inc. filed a petition to institute post-grant review of U.S. Patent No. 9,466,035. Live Nation’s arguments were that the claims were patent ineligible under 35 U.S.C. 101 and would have been obvious under 35 U.S.C. 103.