During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant proceeding was limited, at best. In 2015, legislative activity began to address this perceived problem with draft amendments to the patent statute.

While specific proposals varied, the concept of one approach was that a patent owner seeking to amend claims during a PTAB trial, could prosecute its proposed amendments like ordinary examination (or reexamination) in parallel with the underlying PTAB trial. This amendment examination process, termed an “off ramp” by some, has raised a number of policy and administrative issues. Continue Reading An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

In the most recent action in Depomed, Inc. v. Purdue Pharma LP, a patent infringement case involving pain reliever OxyContin, Purdue Pharma asked the U.S. District Court for the District of New Jersey to confirm that certain of the defenses it raised under 35 U.S.C. §§ 102 and 103 remained after a decision in the inter partes review (IPR) proceedings pertaining to the same patent. Depomed offered several theories to prevent Purdue from pursuing the various infringement defenses it had raised.

First, the court denied Depomed’s theory of statutory estoppel. Depomed had argued that Purdue could have raised these defenses in the IPR, arguing that the current on-sale bar issue related to the MS Contin® product could have been argued in the IPR based on documentation about the MS Contin® product.

The court noted that “Inter partes review cannot replace the district court in all instances, for example, when claims are challenged in district court as invalid based on the on-sale bar…” Quoting Synopsys, Inc. v. Mentor Graphics Corp. Purdue argued that its on-sale bar and § 102(g) defenses were not based solely on patents or printed publications. Rather, the publications were used to support its contentions that “the claimed invention was on sale prior to the filing of the patents-at-issue, or invented by another before that time.” The court agreed that using the publications for support did not transform these defenses “into a statutory ground for relief in an IPR.”

The court also declined Depomed’s argument that Purdue adopted its position in bad faith.  The court noted that throughout the case Purdue had argued that a stay pending the IPR matter would streamline the invalidity issues in the litigation matter.

Finally the court denied Depomed’s theory of judicial estoppel due to statements Purdue made in an effort to obtain the stay pending the IPR. While noting that the court appreciated Depomed’s frustration at having to litigate issues already presented to the Patent Trial and Appeal Board (PTAB), it could not “ignore the fact that the Federal Circuit has determined that it is appropriate to do so.” The court noted that the IPR proceedings reduced the number of defenses and references that remained available to Purdue in the litigation matter.

The “hybrid” procedure of inter partes review has been considered since its inception by some to be litigation at occurs at the patent office, rather than in district court.  The designation of IPRs and other procedures as “patent office trials” by the America Invents Act (AIA), as well as adherence to the Federal Rules of Evidence (FRE) in many instances helped contribute to this sentiment.  However, in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446 (June 20, 2016), the Supreme Court put this notion to rest, concluding that, “in [] significant respects, inter parties review is less like a judicial proceeding and more like a specialized agency proceeding.”  

In Cuozzo, the Court upheld the prior Federal Circuit decision, in which Cuozzo had challenged – and lost – on two procedural aspects of inter partes review: (1) the reviewability of the Board’s institution decisions and (2) the use of a “broadest reasonable construction” (BRC) standard in claim construction. Continue Reading Cuozzo Court Concludes “Hybrid” Inter Partes Review a Specialized Procedure within Patent Office Agency Proceedings

For the issues raised for petitioner and patent owner like by non-instituted grounds, a possible model emerges based on the Board’s actions in Liberty Mutual, and in consideration of a near analogue in patent prosecution practice.

In Liberty Mutual (although very infrequently thereafter), the Board identified from within the “redundant” grounds raised, various groupings of grounds, and issued a pre-institution decision order that gave the petitioner in that case seven days to select which sets of grounds it wanted to maintain.

This process has a near-analogue in patent prosecution practice at the Patent Office: the restriction requirement. Continue Reading The Problem of Non-instituted Grounds, Part II – Lessons from Liberty Mutual

Grounds asserted by a petitioner in an IPR, but not instituted (“non-instituted grounds”) can be a source of frustration for the petitioner and the patent owner alike.  Frequently, not all grounds asserted in an IPR will be instituted by the Patent Trial and Appeal Board (“the Board”).  For the petitioner, non-instituted grounds may be a source of concern, especially if future petitions are time-barred, and/or if the instituted grounds represent only a single invalidity position (e.g., anticipation under 102, but not obviousness under 103). For the patent owner, non-instituted grounds leave unanswered questions about whether and future IPRs might be filed.   Continue Reading The Problem of Non-instituted Grounds, Part I – “Could Have,” Would Have, Should Have