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In This Issue:
- Q&A with Arnold & Porter PTAB Practitioner
Patrick Reidy - Q&A with Arnold & Porter PTAB Practitioner
Michael Sebba - Advance Notice of Proposed Rulemaking
- Notable Board Decision
Board Grants Discovery of ITC Documents. Apple v. Masimo,
IPR2022-01291, Paper 23 (March 17, 2023) - Recent Director Review Decisions
Erroneous § 325(d) Denial Based on Determination That
Substantially the Same Prior Art Was Previously Presented.
Wolfspeed, Inc. v. Trustees of Purdue Univ.,
IPR2022-00761, Paper 13 (March 30, 2023)Petitioner Could Not Have Foreseen § 325(d) Issue Based on
European Counterpart Where Neither Asserted Art Nor European
Counterpart Referenced One Another. Google LLC v. Valtrus
Innovations Ltd., IPR2022-01197, Paper 12 (March 29,
2023) - Recent Federal Circuit Decisions related to PTAB Federal Circuit Precedential Decision: Director’s
Procedural Instructions Regarding Discretionary Denial of
Institution Based on Parallel District Court Litigation, Are Not
Committed to Agency Discretion by Law. Apple Inc. v. Vidal, No.
2022-1249 (Fed. Cir. Mar. 13, 2023)Federal Circuit Precedential Decision: Patentee Has the Burden of
Proving that Invalidity Grounds Not Raised in a Petition for Inter
Partes Review Could Reasonably Have Been Raised. Ironburg
Inventions Ltd. v. Valve Corp., No. 2021-2296 (Fed. Cir. Apr. 3,
2023) - Events and Speaking Engagements
Upcoming Events and Speaking Engagement
How would you describe your practice?
I represent patent owners and accused infringers in patent
litigation, mostly involving computer- and medical device-related
technologies, both in district court and before the
USPTO.
How long have you been practicing in front of the USPTO and
in front of the PTAB?
The first IPR petition I worked on was in 2014 related to
three-dimensional mapping technology. Since then, I’ve
represented patent owners and petitioners, including through appeal
and remand.
Why were you interested in practicing before the PTAB, and
how did you get involved in the practice?
There are a couple reasons I enjoy my PTAB practice. I like
being able to make a case to an audience that is technically and
legally trained to evaluate the validity of a patent claim based on
the pertinent facts and the law, as opposed to a lay district court
jury that may be more unpredictable and prone to make its
determinations based on other factors outside of our direct
control. I also appreciate the efficiency of PTAB practice. The
procedural limitations in PTAB practices force attorneys to make
their best arguments clearly and early and thus narrow the disputes
much sooner than they otherwise would have to.
What do you enjoy about practicing at Arnold &
Porter?
I lateraled to Arnold & Porter with a team in 2015 as a
second year associate and have had a great experience here. I think
there’s a degree of luck involved in finding happiness at any
law firm, but Arnold & Porter does a good job fostering an
environment where a work-life balance can be achieved most of the
time. I’ve also been fortunate to find a team that matches my
personal investment in the job and has rewarded my investment with
meaningful opportunities for personal and skillset development. As
a bonus, I’ve been able to deploy the skillset I developed on
my patent cases on socially significant pro bono matters, and
I’ve been equally impressed by Arnold & Porter lawyers
outside of my core team and practice group on those matters.
What do you like to do in your spare time?
I’m a husband and father of three boys under the age of 6,
so when I’m not working, I’m doing my best with my wife
to figure that out. Otherwise, I like watching good TV shows
(Severance and Better Call Saul are recent favorites), exercising
(cycling and basketball), and listening to audiobooks (always have
a few going at once, fiction and non-fiction, but recently enjoyed
“How Will You Measure Your Life?” by Clayton
Christensen).
How would you describe your practice?
My practice focuses on district court litigation and PTAB work.
I’ve managed to work for different clients on many different
technological areas. I’ve also had the good fortune to do pro
bono work here at Arnold & Porter, Most notably, I worked on a
case where 12 plaintiffs won a $14 million jury verdict against the
city of Denver for police misconduct during the protests that
followed the murder of George Floyd.
How long have you been practicing in front of the USPTO and
in front of the PTAB?
My first assignment as a summer associate in 2014 was helping
prepare demonstratives for a CBM hearing, so I guess I’ve
been practicing in front of the PTAB since before I was a lawyer.
Since then I’ve worked on IPRs, CBMs, ex parte
reexaminations, one inter partes reexamination, and prosecution,
although I’m still chasing my first PGR.
Why were you interested in practicing before the PTAB, and
how did you get involved in the practice?
Practicing before the PTAB is great because it requires many of
the same skills as litigation, but in a setting that is much
more limited than a district court litigation. As a result,
associates often have the opportunity to take ownership of a much
larger share of any given case.
What do you enjoy about practicing at Arnold &
Porter?
The best part of working at Arnold & Porter is definitely
the team we have here. The partners and counsel don’t
hesitate to give opportunities to associates, but aren’t shy
with guidance and mentoring. We’re also lucky to have a wide
variety of clients in different technological areas, so we’re
always working on something new and interesting.
What do you like to do in your spare time?
I spend most of my time chasing around my fourand one-year old
daughters. I’m in the process of teaching the older one to
ride a bike, which is a great time.
Advance Notice of Proposed Rulemaking
Changes under Consideration to Discretionary
Institution Practices, Petition Wordcount Limits, and Settlement
Practices for America Invents Act Trial Proceedings Before the
Patent Trial and Appeal Board.
On April 20, 2023, the USPTO issued an Advanced Notice of
Proposed Rulemaking (“ANPRM”), titled “Changes
under Consideration to Discretionary Institution Practices,
Petition Wordcount Limits, and Settlement Practices for America
Invents Act Trial Proceedings Before the Patent Trial and Appeal
Board.” The ANPRM lays out a myriad of proposed modifications
to the rules of practice for inter partes review (IPR) and
post-grant review (PGR) proceedings and sets a 60-day comment
period from the date of publication (April 21, 2023) in the Federal
Register. If ultimately adopted, these proposed rule changes could
have a significant impact on matters that come before the
Board.
The ANPRM’s proposals generally fall into three
categories: petition word count; pre-institution settlement
agreements; and discretionary denial (which accounts for the
majority of the proposed changes).
Regarding word count, the USPTO is considering permitting
petitioners to pay additional fees (e.g., an additional 50% or
100%) in exchange for a higher word-count limit (e.g., an
additional 50% or 100%) for petitions. Under such a policy,
responsive filings, such as patent owner preliminary responses,
would be allowed a proportional increase in word count limits.
As for pre-institution settlement agreements, while the Board
already requires parties to file true copies of settlement
agreements post-institution, the USPTO is proposing requiring
parties to file settlement agreements even if the proceeding is in
the pre-institution stage.
The remaining proposals in the ANPRM relate to discretionary
denial and focus on petitions in the following categories:
- Petitions filed by certain for-profit entities
- Petitions challenging under-resourced patent owner patents
where the patent owner has or is attempting to bring products to
market - Petitions challenging patent claims previously subject to a
final adjudication upholding the patent claims against
patentability challenges in district court or in post-grant
proceedings before the USPTO - Serial petitions
- Petitions raising previously addressed prior art or arguments
(subject to the 35 U.S.C. 325(d) framework) - Parallel petitions
- Petitions challenging patents subject to ongoing parallel
litigation in district court
Stated policy goals for the proposed rulemaking related to
discretionary denial include creating clear, predictable rules.
Proposed changes to accomplish these goals include those that would
limit the number of filings challenging the same patent. For
example, one proposed rule would require petitioners to file
stipulations that “neither they nor their privy or real
parties have filed prior post-grant proceedings (PGRs, IPRs, CBMs
or ex parte reexaminations requested by third parties, not by
patent owner) as to any of the challenged claims; and that if their
post-grant proceeding is instituted, neither they nor their privy
or real parties in interest, will challenge any of the challenged
claims in a subsequent post-grant proceeding (including PGRs, IPRs,
and ex parte reexaminations requested by third parties, not by
patent owner).” Additional proposed rule changes seek to
clarify the standards for when discretionary denial would be
proper. For example, some proposals include streamlining the Fintiv
test by omitting factors 1 and 5, and solidifying that “the
compelling merits standard is the most appropriate standard for the
Board to apply at the institution stage when determining if the
merits of a petition are sufficiently strong to avoid discretionary
denial.
Notable Board Decision
Board Grants Discovery of ITC Documents. Apple v. Masimo, IPR2022-01291, Paper 23 (March 17,
2023)
The Board granted the patent owner’s motion for additional
discovery seeking production of specific documents from a parallel
ITC proceeding relating to the challenged patent: unredacted copies
of three briefs, thirty-two exhibits, hearing testimony from five
witnesses, and the ITC’s Final Initial Determination pursuant
to 37 C.F.R. § 42.5(b)(2)(i). Patent Owner argued these
materials generally pertained to a reasonable expectation of
success in modifying the prior art and objective indicia of
non-obviousness.
The Board analyzed the factors set forth in Garmin Int’l,
Inc. v. Cuozzo Speed Technologies LLC, IPR2021- 00001, Paper 26
(PTAB Mar. 5, 2013) (Decision on Motion for Additional Discovery)
(precedential): (1) whether the requests are based on more than a
possibility and mere allegation; (2) whether the requests seek
litigation positions and underlying basis; (3) whether the
requestor has the ability to generate equivalent information by
other means; (4) whether the requests are easily understandable;
and (5) whether the requests are overly burdensome to answer.
The Board found the requests were based on more than a mere
possibility of uncovering something useful, as the documents
pertained to the same obviousness theories about the same
combination of references. The Board noted that the patent owner
attempted to obtain the evidence through a motion filed in the ITC
proceeding, and the petitioner argued at the ITC that the patent
owner should “pursue any relevant additional discovery
through an established mechanism in the PTAB.” Additionally,
the Board found unpersuasive the petitioner’s argument that
the patent owner’s requests cover multiple topics, including
those unrelated to the patent at issue in the IPR, noting that the
petitioner had the opportunity to narrow the scope of production
through agreement with the patent owner, but instead chose to
produce nothing.
The Board denied the patent owner’s request for production
of “any exhibits or testimony” cited on certain
redacted pages in the public version of two briefs as too
speculative at this time, in light of the patent owner’s
acknowledgement that it did not know whether documents responsive
to the request existed. However, the Board left open the
possibility that the patent owner may request leave to file a
motion for additional discovery if documents are identified in the
future.
Recent Director Review Decisions
Erroneous § 325(d) Denial Based on Determination
That Substantially the Same Prior Art Was Previously Presented. Wolfspeed, Inc. v. Trustees of Purdue
Univ., IPR2022-00761, Paper 13 (March 30,
2023)
On March 30, 2023, the Director sua sponte issued a decision on
director review of the Board’s Institution Decision in
IPR2022-00761. The Director dismissed the petitioner’s
pending request for Precedential Opinion Panel review of the
Board’s decision denying institution based on 35 U.S.C.
§ 325(d) for presenting substantially the same prior art as a
previous petition by another petitioner. After finding that the
Board erred in determining that the present Petition presented
substantially the same prior art as the previous petition, the
Director vacated the decision denying institution and remanded to
the Board with directions to complete its § 325(d) analysis to
determine whether the present Petition presents substantially the
same arguments as the prior petition.
In the previous IPR, the Board denied institution of the prior
petition based on a lack of motivation to combine two asserted
references: a first reference teaching a metal-oxide semiconductor
field-effect transistor (“MOSFET”), and a second
reference teaching a particular transistor topology. The Board
found that the petitioner’s stated motivation to combine was
directly contradicted by clear disclosure in the second reference,
which “expressly states that the use of the Figure 19E
transistor topology results in a ‘less rugged’
transistor”. The present Petition used the same first
reference as the prior petition to teach a MOSFET, but used two
different references for the disclosure related to transistor
topology.
Addressing the first part of the Advanced Bionics framework, the
Director determined that the Board’s finding that the two
newly asserted transistor topology references were substantially
the same as the previously asserted reference, and thus its
discretionary denial of institution under § 325(d), was in
error. Specifically, the Director determined that the newly
asserted transistor topology references were materially different
from the previously asserted reference in that they lacked the
specific disclosure that the Board found to be fatal to motivation
to combine in the first IPR. Additionally, the Director noted that
the present petition addressed the contradictory statement in the
previously asserted reference.
Having determined that the present petition did not rely on
substantially the same art as the prior petition, the Director
remanded for the Board to determine whether the present petition
nonetheless presented substantially the same arguments as the prior
petition.
Petitioner Could Not Have Foreseen § 325(d) Issue
Based on European Counterpart Where Neither Asserted Art Nor
European Counterpart Referenced One Another. Google LLC v. Valtrus Innovations Ltd.,
IPR2022-01197, Paper 12 (March 29, 2023)
The Director sua sponte vacated a portion of the Board’s
decision discretionarily denying institution based on 35 U.S.C.
§ 325(d) and granted the petitioner’s request for reply,
where the Director determined that the petitioner could not have
reasonably foreseen the issue while drafting its petition.
The petition relied on a prior art reference whose European
counterpart was cited on an IDS signed by the examiner during
prosecution. The patent owner’s Preliminary Response argued
for § 325(d) discretionary denial based on this citation to
the European counterpart during prosecution, and the petitioner
requested leave to file a reply to address the issue. The Board
determined that the petitioner failed to show good cause for
granting leave to file a preliminary reply and issued an order
denying institution.
The Director vacated the Board’s § 325(d) denial,
finding that the petitioner could not have reasonably foreseen the
patent owner’s § 325(d) argument because the asserted
prior art reference and its European counterpart did not cite to
one another, and the asserted reference itself was not cited during
prosecution. Accordingly, the Director ordered the petitioner file
its requested reply addressing § 325(d), that the patent owner
file a sur-reply, and that the Board address § 325(d) based on
all pre institution papers.
Recent Federal Circuit Decisions related to PTAB
Federal Circuit Precedential Decision: Director’s
Procedural Instructions Regarding Discretionary Denial of
Institution Based on Parallel District Court Litigation , Are Not
Committed to Agency Discretion by Law. Apple Inc. v. Vidal, No. 2022-1249 (Fed.
Cir. Mar. 13, 2023)
Apple Inc. and three other companies filed suit in the Northern
District of California, seeking to challenge the Director’s
instructions on discretionary denial of institution based on
parallel district court litigation (including the “Fintiv
instructions” outlined in the Memorandum from PTO Director to
PTAB, Interim Procedure for Discretionary Denials in AIA Post-Grant
Proceedings with Parallel District Court Litigation (June 21,
2022)) on three grounds under the Administrative Procedure Act
(“APA”): (1) that the Director acted contrary to the
IPR provisions of the patent statute, see 5 U.S.C. §
706(2)(C); (2) that the Fintiv instructions are arbitrary
and capricious, see 5 U.S.C. § 706(2)(A); and (3) that
the Fintiv instructions were issued without compliance with the
notice-and-comment rulemaking requirements of 5 U.S.C. § 553,
as assertedly required by that APA provision and by 35 U.S.C.
§ 316. The government moved to dismiss the case, arguing that
the plaintiffs lacked standing and, in the alternative, that an APA
review was unavailable both because (1) “statutes preclude
judicial review” of the matters presented and (2) the
challenges are to “agency action [that] is committed to
agency discretion by law,” 5 U.S.C. §
701(a)(1)–(2). The district court dismissed the case, holding
that such decisions were unreviewable under 35 U.S.C. § 314(d)
because the court “would have to analyze questions that are
closely tied to the application and interpretation of
statutes” governing institution decisions
The Federal Circuit affirmed the § 701(a)(1) dismissal that
the Director acted contrary to the IPR provisions of the patent
statute and the Fintiv instructions are arbitrary and
capricious, and determined that it need not consider §
701(a)(2) or standing.
Regarding the challenge concerning the absence of
notice-and-comment rulemaking, the Court held that neither §
701(a)(1) nor § 701(a)(2) bars review of that challenge noting
that “[t]he rulemaking provision of the APA, 5 U.S.C. 553,
may itself provide ‘law to apply’ for reviewing agency
procedures, even if there is otherwise no jurisdiction to review
the substance of the agency decision.” The Court determined
that because Apple is “non-speculatively threatened with harm
to a legally protected interest from the challenged
instructions” it had standing to press the claim that the
challenged instructions were improperly put in place without
notice-andcomment rulemaking and remanded to the district court for
consideration of the notice-and-comment rule making challenge on
the merits.
Federal Circuit Precedential Decision: Patentee Has the
Burden of Proving that Invalidity Grounds Not Raised in a Petition
for Inter Partes Review Could Reasonably Have Been Raised. Ironburg Inventions Ltd. v. Valve Corp.,
No. 2021-2296 (Fed. Cir. Apr. 3, 2023)
The Federal Circuit vacated and remanded the district
court’s finding that an IPR petitioner was estopped from
litigating later-discovered invalidity grounds that were not
included in the IPR petition. The petitioner sought to raise
grounds in the district court that were based on references on the
face of the patent at issue and that were raised in a previous IPR.
The Court found that the district court improperly placed the
burden of proof on the petitioner to show that it could not
reasonably have raised the “Non-Petitioned Grounds” in
its petition.
The petitioner failed to offer evidence “concerning the
degree of difficulty involved in locating the prior art references
at issue.” The district court held that an IPR petition
“reasonably could have raised any grounds that a skilled
searcher conducting a diligent search reasonably could have been
expected to discover,” but implicit in their holding was the
“view that the burden of proof rests on [the petitioner], as
the party challenging the patent’s validity.” However,
the Federal Circuit agreed with the petitioner’s position
that the burden of proof should be placed with the patent owner, as
the patent owner is the party seeking to benefit from the assertion
of estoppel. Further, the Federal Circuit found this holding to be
consistent with “the general practice that a party asserting
an affirmative defense bears the burden to prove it.”
Ultimately, the Federal Circuit held the burden is on the patent
owner to “prove, by a preponderance of the evidence, that a
skilled searcher conducting a diligent search reasonably would have
been expected to discover the invalidity grounds at
issue.”
Events and Speaking Engagements
Upcoming Events and Speaking Engagements
Upcoming webinar information
session with the Under Secretary of Commerce for Intellectual
Property and Director of the USPTO Kathi Vidal about the recently
published Advance Notice of Proposed Rulemaking
(ANPRM)
- The Information Session will be about the recently published
ANPRM seeking public input on proposed changes to discretionary
institution practices, petition word limits, and settlement
practices for AIA proceedings before the PTAB. - The Information Session will be held on May 9, 2023, from noon
to 1 p.m. ET. - The Information Session is free and open to all.
More details and information can be
found here.
Upcoming 21st Annual Rocky
Mountain Intellectual Property & Technology Law
Institute
The Annual Rocky Mountain
Intellectual Property & Technology Law Institute brings
together prominent government officials and private practitioners
to discuss hot topics across the various aspects of IP law. The
conference starts with a day dedicated to IP fundamentals on May
31, and then proceeds to the two-day IP Institute on June 1-2. In
the IP Institute, participants can choose among sessions in four
tracks: Patents/Patent Litigation, Trademarks/Copyrights, Tech
Transactions and Licensing, and In House.
For the Trademarks/Copyrights track,
Arnold & Porter partner Evan Rothstein will be presenting on a
panel on Copyright Updates, addressing recent developments in
copyright law over the last year. This panel discussion will be on
June 1 at 2:40-3:30 p.m. MDT.
For the Patents/Patent Litigation
track, Arnold & Porter partner Jessica Kaiser will be
presenting on a panel on “A Litigator’s View of Claim
Drafting.” The panel discussion will focus on correlating
claim breadth to damages, ensuring enablement, and the post-Alice
need for computational granularity and will be on June 2 at 11:10
a.m.-12:00 p.m. MDT.
This conference will take place in
Westminster, Colo. and via webcast. More details and registration
information can be found here.
Upcoming Federal Circuit Bar
Association Bench and Bar Conference
The Federal Circuit Bar
Association’s Bench and Bar Conference is celebrating its
25th anniversary this summer. This conference brings together
judges on the Court of Appeals for the Federal Circuit with
adjudicators whose decisions are appealed to the Federal Circuit,
government policy makers, and top private practitioners to discuss
important issues confronting the Federal Circuit community.
Arnold and Porter is an FCBA Leaders
Circle Sponsor. During the Bench and Bar Conference, Arnold &
Porter partner Abigail Struthers will be presenting on a panel on
June 30, titled “Claim Construction — Do We Need
Phillips 2.0?” The next day (July 1), Arnold & Porter
partner Jessica Kaiser will be moderating the PTAB panel.
The June 28-July 1 conference is at
the Broadmoor in Colorado Springs. More details and registration
information can be found here.
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