This marks the first issue of WilmerHale’s PTAB/USPTO Update, a monthly bulletin that will highlight important developments from the US Patent and Trademark Office (USPTO) and Patent Trial and Appeal Board (PTAB). This will serve as a reliable and informative resource for readers who wish to stay current on the dynamic patent law landscape as influenced by the USPTO, and more specifically, the PTAB.
Notices, Guidance and Requests
- Extension of the Cancer Immunotherapy Pilot Program, 85 Fed. Reg. 41570 (July 10, 2020)
- Manual of Patent Examining Procedure, Ninth Edition, Revision of June 2020, 85 Fed. Reg. 41571 (July 10, 2020)
- Setting and Adjusting Patent Fees During Fiscal Year 2020, 85 Fed. Reg. 46932–46993 (August 3, 2020) [Summary available here.]
- There are no new interim rules.
- Changes to Representation of Others Before the United States Patent and Trademark Office, 85 Fed. Reg. 45812–45834 (July 30, 2020)
- New Precedential PTAB Decisions
- Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Case IPR2018-00600, Paper 67 (July 6, 2020) (designated: July 6, 2020) (Precedential Opinion Panel decision) [AIA § 316(d), The POP issued a precedential opinion to resolve two questions: (1) May the Board raise a new ground of unpatentability not developed by the petitioner against substitute claims proposed in a motion to amend?; and (2) If it does so, must the Board provide the parties notice and an opportunity to respond? The POP held that the Board may raise a ground of unpatentability that a petitioner did not advance against substitute claims, but only under certain rare circumstances, such as when a petitioner stops participating in a proceeding or does not oppose a motion to amend. Further, the POP decided that due process requires notice of how the prior art applies to newly-added limitations in substitute claims, and that such notice cannot come from the grounds used in the petition. The POP explained that the notice requirement could possibly be fulfilled by allowing for supplemental briefing or by requiring that the parties be prepared to discuss how the prior art applies to the substitute claims at the oral hearing.]
- New PTAB Informative Decisions
- Apple Inc. v. Fintiv, Inc., Case IPR2020-00019, Paper 15 (May 13, 2020) (designated July 13, 2020) [AIA § 314(a), The Board denied institution after applying the six Fintiv factors established in an earlier Precedential Decision in the same proceeding. The Fintiv factors are relevant to the Board’s decision whether to apply its discretion to deny institution under 35 U.S.C. § 314(a) in view of a parallel proceeding. The Board denied institution because “the District Court case is ongoing, trial is scheduled to begin two months before we would reach a final decision in this proceeding, the District Court has expended effort resolving substantive issues in the case [including issuing a detailed claim construction order], the identical claims are challenged based on the same prior art in both the Petition and in the District Court, and the defendant in District Court and the Petitioner here are the same party” and further because the Board viewed the Petitioner’s arguments “as containing some weaknesses.”]
- Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC, Case IPR2019-01393, Paper 24 (June 16, 2020) (designated July 13, 2020) [AIA § 314(a), On rehearing, the Board instituted IPR, reversing its previous decision denying institution, finding that the Fintiv factors weighed against exercising discretion to deny institution based on a parallel proceeding. Relevant to the second Fintiv factor and weighing in favor of institution, the trial date for the parallel district court ligation had been extended several times by joint motion of the parties and there was uncertainty surrounding the scheduled trial date. Relevant to the fourth Fintiv factor and weighing in favor of institution, the petitioner had stipulated that it would not pursue the same grounds as in the district court litigation in the event the IPR was instituted.]