Discretionary denial has been a hot topic at the PTAB. On Wednesday, February 24th, Wolf Greenfield hosted a webinar to discuss discretionary denial at the PTAB, and in particular, discretionary denial based on parallel infringement litigation in district court or the ITC.
Although judicial review of decisions during IPR typically occurs through appeal after the PTAB’s Final Written Decision, a growing number of cases are exploring other means of judicial review. Questions remain about whether those other means can provide a way to overcome the statutory limits on the appealability of IPR decisions, which we previously discussed. This post, which is the third in a series about judicial review of IPR, addresses a third trap for the unwary: the availability of alternatives to appeal.
Mandamus: Perhaps the most well-known alternative to appeal from and IPR is petitioning for a writ of mandamus. Ever since the Supreme Court’s first decision on IPRs, Cuozzo v. Lee, 136 S. Ct. 2131 (2016), left open the possibility of judicial review of constitutional and statutory rights related to institution, some have speculated that mandamus may be the best route to present those arguments. Indeed, the Supreme Court’s most recent decision on IPRs, Thryv v. Click-To-Call, 140 S. Ct. 1367 (2020), declined to foreclose the use of mandamus in “extraordinary cases.”
A series of Supreme Court cases has clarified that not all issues that arise in IPR are appealable. Thus, in addition to considering the issue of standing, which we previously discussed, a party considering appeal must also determine whether the issue it would want review can even be appealed. This post, which is the second in a series about judicial review of IPR, addresses a second trap for the unwary: the limited scope of permitted appeal.
Section 314(d) prohibits appeal of the PTAB’s decision “whether to institute [IPR] under this section.” Some interpreted that as limiting appeal only of the Institution Decision’s determination under Section 314(a) that the petition’s unpatentability arguments are sufficiently strong to deserve institution. The Supreme Court rejected that interpretation in Cuozzo v. Lee, 136 S. Ct. 2131 (2016), applying the appeal bar to the related determination under a different section that the petition was written with sufficient “particularity.”
(Co-authored by Elisabeth Hunt)
In the time since the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB), inter partes review (IPR) and other PTAB proceedings for challenging patents’ validity have proven to be powerful tools for those accused of infringement. But increasingly, the PTAB’s exercise of its discretion to deny institution of review for non–merits-based reasons has become a powerful counter-defense for patent owners. Although discretionary denial has been a feature of PTAB proceedings since their inception, the range of circumstances in which the PTAB discretionarily denies institution and the frequency with which it does so are increasing. Discretionary denial has thus become a disputed issue in an increasingly large proportion of PTAB proceedings.
Seeking judicial review of an IPR decision can be a trap for the unwary. Section 319 permits a “dissatisfied” party to appeal. And while the language may seem simple, it can lead parties astray. This post, which is the first in a series about judicial review of IPR, addresses the first trap for the unwary: the constitutional requirement of standing.
Although Section 319 might be misread to allow any “dissatisfied” party to appeal, the party must still have standing to appeal. Thus, in Droplets v. E*TRADE, 887 F.3d 1309 (Fed. Cir. 2018), the Federal Circuit held that a petitioner that won but was “dissatisfied” with the PTAB’s reasoning still could not appeal. And in SkyHawke v. Deca, 828 F.3d 1373 (Fed. Cir. 2016), a potentially analogous decision concerning reexamination, the court rejected an appeal by a winning patent owner that wanted a different claim construction.
Invalidity grounds in IPR that are not based on patents must be based on printed publications. But the nature of the evidence required at the time of institution to show that a non-patent reference is a printed publication has long been uncertain. The PTAB’s Precedential Opinion Panel (POP) in Hulu v. Sound View Innovations, IPR2018-01039 (Dec. 20, 2019), provided some clarity and left other issues for future PTAB panels to resolve.
This blog post is part of Wolf Greenfield's COVID-19 Resource Center. To access the full resource center, click here.
Appearing before the Patent Trial and Appeal Board (PTAB) looks different as a result of COVID-19. The PTAB recently held a “Boardside Chat” to talk about how PTAB practice has changed. Here are some important changes practitioners should know regarding case management, CARES Act extensions and remote hearings at the PTAB.
Prosecution history can be a minefield in patent cases, and IPR is no different. In the context of construing patent claims, much of the focus is often on whether the patent owner disclaimed particular subject matter from the scope of the claims. But two recent Federal Circuit decisions reviewing decisions in IPR illustrate that even absent disclaimer, patent owners may be able to save the challenged claims by pointing to their past statements during prosecution.
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.
Topics: Patent Owners
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.