Gibbons Law Alert

Gibbons Law Alert

Tagged: Patent Prosecution

USPTO Issues Guidance Applying SAS Institute to Pending and Future PTAB Trials

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Posted in Patent / USPTO

On May 1, 2018

On April 26, 2018, the United States Patent and Trademark Office (USPTO) issued a guidance, applying SAS Institute v. Iancu to the America Invents Act (AIA) trial proceedings. The U.S. Supreme Court in SAS Institute held that when the Patent Trial and Appeal Board (PTAB) institutes an inter partes review, it must decide the patentability of all claims challenged in the original petition. The USPTO guidance gives a general outline of how the PTAB will review patents in the future, and how it will handle cases that are already pending. The memo makes clear that the PTAB will no longer have partial institutions: “if the PTAB institutes a trial, the PTAB will institute on all challenges raised in the petition.” For pending trials in which the PTAB has instituted trial on only some of the petitioned claims, “the panel may issue an order supplementing the institution decision to institute on all challenges raised in the petition.” The final written decision will address, to the extent claims are still pending at the time of decision, “all patent claims challenged by the petitioner and all new claims added through the amendment process.” When supplementing the institution decision, the panel has discretion to manage the trial proceeding. The panel may permit “additional time, briefing, discovery, and/or oral argument, depending on...

Supreme Court Upholds the Constitutionality of Inter Partes Review

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Posted in Patent

On April 27, 2018

The Supreme Court in Oil States Energy Services v. Greene’s Energy Group upheld the constitutionality of inter partes reviews, holding that inter partes review does not violate Article III or the Seventh Amendment of the Constitution. The Supreme Court held that inter partes review involves public rights and is simply a reconsideration of the grant of a public franchise. Therefore, allowing the Patent and Trademark Office (PTO) to reconsider the grant of a public right does not violate Article III. The Supreme Court concluded that the grant of a patent has long been recognized as a public right, and the Seventh Amendment is not violated because a jury is not necessary since the PTO can properly conduct inter partes review. The Supreme Court qualified that its holding was narrow. The Supreme Court’s constitutionality determination applied to inter partes review only. The Court did not rule on the retroactive application of inter partes review to a patent granted before AIA post-grant proceedings were in place, nor to any due process challenges. Oil States Energy Services and Greene’s Energy are oilfield services company. After Oil States sued Greene’s Energy for infringing a patent related to hydraulic fracturing, Greene’s Energy challenged the patent’s validity in an inter partes review. The inter partes review and litigation progressed in parallel. A...

While the PTO Director has Discretion to Institute an IPR, the Board Must Review All Petitioned Claims Upon Institution

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Posted in Patent / USPTO

On April 25, 2018

The U.S. Supreme Court in SAS Institute v. Iancu held that when the Patent Trial and Appeal Board (PTAB or “the Board”) institutes an inter partes review (IPR), it must decide the patentability of all claims challenged in the original petition. Here, in a case with wide-reaching implications, the questions centered on the United States Patent and Trademark Office (USPTO) Director’s discretion and subsequent control of an IPR. In the underlying case, SAS filed a petition for IPR alleging that all 16 claims of a particular patent were unpatentable. The Board instituted review on nine of the challenged claims and denied review on the rest, eventually finding eight of the instituted claims unpatentable in a final written decision. The Federal Circuit rejected SAS’s argument on appeal that 35 U. S. C. §318(a) required that the Board decide the patentability of all 16 claims challenged in the petition. The Supreme Court, in a 5-4 opinion authored by Justice Gorsuch, reversed the Federal Circuit, striking down partial IPR decisions. The Supreme Court held that the plain text of §318(a) conclusively answers the question presented. The section directs that “[i]f an inter partes review is instituted and not dismissed under this chapter, the [Board] shall issue a final written decision with respect to the patentability of any patent claim...

The USPTO Under Recently Appointed Director Andrei Iancu Will Promote Innovation and Increase Reliability in Issued Patents

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Posted in Patent / USPTO

On April 18, 2018

Speaking to the U.S. Chamber of Commerce on April 11, 2018, recently sworn-in USPTO Director Andrei Iancu gave an impassioned speech about his vision for the patent system. Director Iancu outlined challenges facing the USPTO and goals the agency aspires to achieve, focusing on two main objectives: (1) creating a new pro-innovation, pro-IP dialogue, and (2) increasing the reliability of the USPTO granting patents. Stakeholders should take note of the Director’s objectives and should anticipate policy changes that further strengthen the patent system. Creating a new pro-innovation, pro-IP dialogue One thing is clear from Director Iancu’s remarks: the USPTO under his leadership will strive to help the inventor and incentivize innovation. Consistent with this goal, the USPTO will “create a new narrative that defines the patent system by the brilliance of inventors, the excitement of invention, and the incredible benefits they bring to society.” “And it is these benefits,” Director Iancu continued, “that must drive our patent policies.” Much of the narrative of the patent system in recent memory has focused on curbing abuses of non-practicing entities sometimes referred to as “patent trolls.” And Director Iancu’s remarks suggest that the USPTO will actively try to change that narrative. Iancu explained that errors and abuse should be “identified and swiftly eliminated,” but on the whole, the...

Constitutionality of IPRs and PGPs

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Posted in Biotech / Patent / Pharmaceuticals / USPTO

On September 5, 2017

Recently, the Supreme Court granted certiorari in Oil States Energy Services v. Green’s Energy Group, Case 16-712 that may have implications on the constitutionality of America Invents Act (AIA) patent review proceedings such as Inter Partes Review (IPRs) and Post Grant Proceedings (PGPs). The case being reviewed involved a fracking patent granted to Oil States. Green’s Energy petitioned to have the Oil States patent reviewed in an IPR (6,179,053). The IPR resulted in the Oil States patent claims being held unpatentable. But, upon review at the Federal Circuit, Oil States challenged the decision and added that IPRs were not allowed under Article III and the Seventh Amendment of the Constitution. In particular, the Oil States argument advanced that the patents must be tried before a jury because invalidity of patent claims traditionally have been a jury issue before a court of competent jurisdiction. The Oil States argument then indicated that Congress could not delegate that right to an administrative agency. The Federal Circuit affirmed the USPTO’s IPR decision of invalidity, without the issuance of an opinion. Following that decision, Oil States petitioned for certiorari to the Supreme Court regarding three issues. The one issue was whether IPR was in violation of the Constitution’s Article III provision since there was no jury trial adjudication of the...

Natural Phenomenon Takes Back Seat to Analysis

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Posted in Patent / Pharmaceuticals

On August 1, 2017

In a recent decision of the CAFC entitled Millennium Pharmaceuticals, Inc. v. Sandoz Inc., et al, a consolidated appeal of cases 2015-2066, 2016-1008, 2016-1009, 2016-1010, 2016-1109, 2016-1110, 2016-1283, and 2016-1762, decided July 17, 2017, Judge Newman writing the opinion for a unanimous panel reversed a decision of the District Court for the District of Delaware holding the patent (US 6,713,446) on the cancer drug Velcade® invalid for obviousness. That drug had been used clinically to successfully treat multiple myeloma and mantle cell myeloma. The active moiety in Velcade® was the compound D-mannitol N-(2-Pyrazine)carbonyl-L-phenylalanine-L-leucine boronate. That compound arose as a result of a yearlong quest to solve the instability problem with solutions of the non-sugar containing bortezomib compound. When the inventor of the ‘446 patent (a scientist at the NCI and the University of Kansas) lyophilized bortezomib in the presence of mannitol he obtained the aforesaid boronate which had covalently incorporated the mannitol producing a new compound. This compound proved to be not only stabile on storage and in solution but also when administered to a subject functioned as a prodrug for bortezomib. No prior art was presented that taught or suggested a compound whose structure presented a basis for an obvious rejection using standard analysis of a pharmaceutical compound claim. In the District Court case,...

UK Will Ratify UPC Despite Brexit

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Posted in Patent

On January 3, 2017

Recently, the UK Minister of State for Intellectual Property, Baroness Neville-Rolfe, announced that the UK will implement the Unitary Patent (UP) and Unified Patent Court (UPC). In the announcement, Neville-Rolfe both praised the UP/UPC system as “provid[ing] an option for businesses that need to protect their inventions across Europe” and cautioned that the UK’s decision to implement the UP/UPC system “should not be seen as preempting the UK’s objectives or position in the forthcoming negotiations with the EU.”

The Supreme Court Weighs in on PTAB’s Claim Construction Standard for IPR Proceedings

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Posted in Patent

On August 12, 2016

In a recent decision, the Supreme Court affirmed the Federal Circuit’s ruling that the Patent Trial and Appeal Board (PTAB) was within its authority to give a patent claim “its broadest reasonable construction” during an inter partes review (IPR) proceeding. The Court found that the PTAB was authorized to apply this standard because 35 U. S. C. §316(a)(4) granted the Patent Office authority to issue “regulations . . . establishing and governing inter partes review under this chapter.”

Long Lost Wright Brothers’ Patent File Found

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Posted in Patent

On April 4, 2016

On Sunday, The Washington Post published an interesting article explaining how the long lost Wright brothers’ patent file for the “Flying Machine” was finally found in March. The government had been searching for this file for the last 16 years. The file, which was last seen in 1980, was thought to be stored in a vault at the National Archives. But, in 2000, when an official commemoration was being planned, they realized it was missing. Ultimately, they were able to locate it in a limestone storage cave in Lenexa, Kansas. Although there was concern that the important record was stolen, the conclusion now is that it was probably just misfiled. The article indicates that the National Archives was able to identify this file as a part of a larger effort to locate missing documents.

Supreme Court to Review First AIA Trials Case

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Posted in Patent / USPTO

On February 16, 2016

Last month, the U.S. Supreme Court granted certiorari in Cuzzo Speed Techs., LLC v. Lee, in which it will review the first Inter Partes Review (IPR) decision from the Patent Trial and Appeal Board (PTAB) created under the America Invents Act. Last month, the U.S. Supreme Court granted certiorari in Cuzzo Speed Techs., LLC v. Lee, in which it will review the first Inter Partes Review (IPR) decision from the Patent Trial and Appeal Board (PTAB) created under the America Invents Act. The Court will specifically review: Whether the Federal Circuit erred in holding that, in an IPR proceeding, the PTAB may construe claims in an issued patent according to their “broadest reasonable interpretation” (“BRI”) rather than their “plain and ordinary meaning;” and Even if the Board exceeded its statutory authority in instituting an IPR proceeding, whether the Federal Circuit erred in holding that the PTAB’s decision to institute an IPR proceeding is judicially non-reviewable.

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