Patent Trial and Appeal Board Adds Two More Cases to its List of Precedential and Informative Decisions

By Tom Engellenner
Earlier this month, the Patent Trial and Appeal Board (PTAB) added two decisions to its list of “precedential” opinions for the USPTO’s new proceedings for challenging patents under the America Invents Act. The list (which now consists of three decisions out of the over 1000 opinions that have been rendered) is intended to bring to public’s attention cases that the PTAB has concluded settle aspects of the evolving law governing inter partes review (IPR), covered business method (CBM) review, supplemental examination and post grant review (PRG) proceedings.

With over 200 administrative patent judges and over 2000 pending proceedings being handled by a myriad of different panels of judges, precedential decisions are intended to resolve conflicts. However, the process for designating an opinion as “precedential” is quite cumbersome. The process starts by nomination of an opinion by a PTAB judge (or a member of the public within 60 days of the rendering of the opinion). The Chief Judge of the PTAB then circulates the opinion to all members of the PTAB with an invitation to comment (typically within 10 days) and then vote on whether the opinion should be designated as precedential. If a majority of the PTAB judges agrees, the Chief Judge notifies the Director of the Patent Office, who can concur or reject the recommended designation. If the Director concurs, then the opinion labeled as precedential and publishes as such on the USPTO website (http://www.uspto.gov/patents-application-process/appealing-patent-decisions/decisions-and-opinions/precedential).

In the first new precedential opinion, LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (PTAB Sept. 17, 2015), the PTAB found LG’s petition for inter partes review was barred by 35 U.S.C. § 315(b), even though LG had filed its petition within one year of being served with an infringement complaint in 2014. The opinion concluded that the one-year bar of section 315(b) applies because petitioner had also been served with an earlier infringement complaint in 2008 on the same patent. There’s a certain irony in this decision because IPR proceedings did not come into existence until 2012 – so LG could never have petitioned for IPR the first time around. The effect of this decision apparently is that anyone sued more than a year before the AIA proceedings became available is effectively barred from petitioning for inter partes (or CBM) review.

The LG opinion notes but does not necessarily endorse an earlier PTAB decision (Oracle Corp. v. Click-to-Call Techs., LP, Case IPR2013-00312, Paper 40 (PTAB Dec. 18, 2013) ) in which a panel held that the 315(b) bar is not triggered by an earlier complaint – more than one-year before the petition – if the action is dismissed without prejudice. The panel in the LG case distinguished the Oracle decision because in the present case the dismissal of Mondis’s 2008 complaint was dismissed partial with prejudice and partially without prejudice.

In the second decision designated as precedential on January 12, 2016, Westlake Services, LLC v. Credit Acceptance Corp., (CBM2014-00176, Paper 28 (PTAB May 14, 2015) the Board interpreted the estoppel provision of 35 U.S.C. § 325(e)(1), ruling that the estoppel that prevents a petitioner from bringing a second CBM or PGR proceeding following “a final written decision” in the statute refers only to a decision on the specific claims on which the proceeding was instituted. Westlake was thus not estopped from bringing a second petition and challenging different claims. Continue reading “Patent Trial and Appeal Board Adds Two More Cases to its List of Precedential and Informative Decisions”

No Second Bite Of The Apple for Square, Inc. – PTAB Applies Estoppel Provision Of 35 U.S.C. §325(e)(1) TO CBM Review

By Reza Mollaaghababa
In the case of Square, Inc. v. Unwired Planet, LLC (CMB2015-00148), the PTAB held that the grounds raised by Square, Inc. (Petitioner) to challenge the validity of claims 1-4 of Unwired Planet’s U.S. Patent No. 7,711,100 could have been raised in a previous petition filed by Square, Inc. against the same patent, and hence denied the institution of a covered business method (CBM) review. In particular, the Board relied on the estoppel provision of 35 USC 325(e)(1), to deny the institution of a CBM review. This portion of section 325 mandates that the petitioner, or the real party in interest or privy of the petitioner, in a post-grant review of a claim that results in a final written decision “may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.”

The Petitioner had previously filed a CBM petition challenging claims 1-4 of the ‘100 patent (CBM2014-00156), which relates to methods for coordinating financial transactions via a wireless network, such as a wireless telephone network. In that proceeding, the petitioner argued that the claims at issue were invalid under 35 U.S.C. §101 as drawn to patent ineligible subject matter as well as invalid under 35 U.S.C. §102 and 103 as either anticipated or rendered obvious by a prior art reference (a thesis by Vazvan). The PTAB initiated a trial on the §101 ground but declined to include the §102 and 103 grounds in the trial because it found the evidence of public availability of the Vazvan thesis deficient. Ultimately, in a final written decision, the PTAB held that the challenged claims were not eligible for patenting pursuant to 35 U.S.C. §101.

Not satisfied with the decision invalidating the claims as patent ineligible subject matter, Square, Inc. filed a second petition arguing that claims 1-4 were invalid under 35 U.S.C. §102 and 103 as anticipated or rendered obvious by a different prior art reference (U.S. Patent No. 5,579,535 of Orlen). Continue reading “No Second Bite Of The Apple for Square, Inc. – PTAB Applies Estoppel Provision Of 35 U.S.C. §325(e)(1) TO CBM Review”

Federal Circuit Affirms Invalidity Of A Merck Patent Based On Substantial Evidence Standard

By Reza Mollaaghababa
In a recent case, the Court of Appeals for the Federal Circuit affirmed the PTAB’s decision that certain claims of Merck’s U.S. Patent No. 6,011,040, which were challenged by Gnosis, were invalid as anticipated or obvious. The case confirms that the Federal Circuit will apply a relaxed standard for review of the Patent Office’s post grant patent review proceedings and will give a good deal of deference to PTAB “findings of facts.”

The ‘040 patent relates to methods of using folates to reduce the level of homocysteine in the human body. More specifically, the challenged claims 8 and 9 of the ‘040 patent recite a method of “preventing or treating disease associated with increased levels of homocysteine … comprising administering at least one tetrahydrofolate in natural stereoisomeric form,” where the tetrahydrofolate is L-5-MTHF or a salt thereof. In addition, the challenged claims 11 and 12 require that the increased levels of homocysteine be associated with deficiency in a reductase enzyme that helps generate L-5-MTHF.

The Board held that a combination of three references (Serofontein, Marazza and Ubbink) renders a number of the challenged claims obvious. The Board also found certain claims as anticipated by Serofontein, which discloses that elevated levels of homocysteine are linked to a number of clinical defects, such a vascular problems, and that high levels of homocysteine are often associated with folate deficiency. Serofontein also teaches a pharmaceutical preparation for treating high levels of homocysteine that includes “a folate or a suitable active metabolite of folate” along with vitamin B6 and B12. Marazza discloses L-5-MTHF as a “natural metabolite” that may be used “as at least one active compound” in a treatment of folate deficiency. Ubbink states that the reasons for high levels of homocysteine include enzymatic deficiency, such as “cystathionine- β -synthase deficiency, or possession of a thermolabile variant of methylenetetrahydrofolate reductase, an enzyme required in the remethylation of homocysteine methionine.” Continue reading “Federal Circuit Affirms Invalidity Of A Merck Patent Based On Substantial Evidence Standard”