1. Federal Circuit control over PTAB in post-grant proceedings Fordham IP Institute Conference 2018
John Richards

2. Appeal from PTAB decisions in post grant challenge proceedings
35 USC 319 states provides that party dissatisfied with the final written decision of the PTAB in inter partes review proceedings may appeal the decision and that any party to the inter partes review shall have the right to be a party to the appeal.
35 USC 314 (d) states that he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.
35 USC 329 and 35 USC 324(e) set out similar provisions for post grant review.

3. Wi-Fi One LLC v. Broadcom Corporation (en banc)
In a 9-4 decision authored by Judge Reyna the Federal Circuit overruled its prior Achates decision and held that the Supreme Court’s decision in Cuozzo v. Lee did not preclude all appeals from decisions to implement proceedings and that the language of the statute barred appeals only to decisions on implementation of review made under “this section” (35 USC 314) and so left open the possibility of judicial review of whether the timeliness requirements of 35 USC 315 (requiring that review must be requested no more than one year after petitioner or its privies had been sued under the patent) had been met.

4. Aqua Products Inc. v. Matal
A badly fractured Federal Circuit found that, at least so far as the current Patent Office rules are concerned, if the patent owner seeks to amend its claims in contested post grant proceedings, contrary to the PTAB’s holding, the challenger bears the burden of proving the proposed claim is invalid on the balance of probabilities.

5. Prior to this decision, the PTAB had held in decisions such as Idle-Free that when seeking to amend claims in PTAB proceedings, the patent owner bore the burden of showing that the proposed amended claims were patentable not only over the prior art cited in the proceedings but also over other prior art known to it.

6. The Relevant Statutory Provisions
35 USC 316(e) states that in an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.
35 USC 316(d)(1) amendments are to be proposed by motion; the proponent of a motion bears the burden to show that the motion should be accepted.

7. O’Malley J A plurality of judges on the court
“believe that § 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims. This conclusion is dictated by the plain language of § 316(e) ….. Because a majority of the judges … believe the statute is ambiguous on this point, we conclude in the alternative that there is no interpretation of the statute by the Director of the .. PTO to which this court must [give Chevron deference]”

8. And we believe that, in the absence of any required deference, the most reasonable reading of the AIA is one that places the burden of persuasion with respect to the patentability of amended claims on the petitioner. Finally, we believe that the Board must consider the entirety of the record before it when assessing the patentability of amended claims under § 318(a) …

9. She saw the burden being limited to showing that the movant complied with the timing and procedural requirements for making the motion, but not to who bore the ultimate burden of showing patentability.
Reyna and Dyk JJ saw the statutory language as ambiguous, but would have upheld any rule made by the Patent Office to place the burden on the patent owner had such a rule been made properly, but that was not the case here.

10. Taranto, Prost CJ, Chen and Hughes JJ saw the statutory authority given to the Director of the PTO to make rules for the procedure to be followed in IPR and PGR as sufficient to permit the PTO to require the patent owner to bear the burden of showing that the proposed amendments were patentable.

11. Following the decision, the Chief PTAB judge stated
In light of the Aqua Products decision, the Board will not place the burden of persuasion on a patent owner with respect to the patentability of substitute claims presented in a motion to amend. Rather, if a patent owner files a motion to amend (or has one pending) and that motion meets the requirements of 35 U.S.C. § 316(d) (i.e., proposes a reasonable number of substitute claims, and the substitute claims do not enlarge scope of the original claims of the patent or introduce new matter), the Board will proceed to determine whether the substitute claims are unpatentable by a preponderance of the evidence based on the entirety of the record, including any opposition made by the petitioner.

12. Bosch Automotive Service Solutions v. Matal
Held, contrary to the PTAB holding, that the burden of proof with respect to the patentability of amended claims lies with the challenger not only on cases where the issue is one of distinguishing the prior art but also in considering whether the proposed amended claims meet the definiteness requirements of 35 USC 112.

13. Polaris Industries Inc v. Arctic Cat Inc.
The Federal Circuit saw no basis in its jurisprudence for the PTAB’s reliance on “subjective preference” as a factor to be considered as a motivation to modify the teaching of a prior art reference in an obviousness analysis. The Court further concluded that the PTAB had failed properly to consider the patent owner’s argument that the art taught away from what was claimed and had substituted an analysis of “what the prior art indicated could be done” for a proper motivation analysis.

14. What to do when the PTAB is wrong?
A concern shown in many cases is that the PTAB has failed to give a clear explanation for its decisions.
In Icon Health & Fitness Inc. v. Strava Inc. and Rovalma S.A. v. Bohler-Edelstahl GmbH & Co. after pointing out lack of an adequate explanation by the PTAB for its decisions, the Federal Circuit remanded the cases to the PTAB to apply the correct approach. In DSS Technology v. Apple, it simply reversed the PTAB decision.

15. Icon Health & Fitness Inc. v. Strava Inc (Inter partes re-examination)
On some of the claims it was found that the PTAB had failed to make requisite factual findings or give an adequate explanation of reasons for finding obviousness having based its conclusions on argument rather than evidence.

16. Rovalma S.A. v. Bohler-Edelstahl GmbH & Co
PTAB failed sufficiently to lay out the basis for its implicit findings that PHOSITA would “at least inherently completed selection steps set out in the claim” and why other steps were obvious. Additionally the PTAB had not explained why PHOSITA would have been motivated to modify certain characteristics of alloys known in the prior art.
Consequently “the board has not provided a sufficiently focused identification of relevant evidence or explanation of its inferences” for the court to confidently review the PTAB’s decision.

17. DSS Technology Management v. Apple Inc
The Court simply reversed the PTAB decision despite a dissent by Judge Newman who pointed out that reversal was not a proper remedy for the PTAB having failed to explain its decision adequately.
The key issue was whether the evidence provided a motivation to modify the prior art and the majority found that the evidence filed to show motivation suffered serious defects and that there was no other evidence in the case that might correct them.

18. Arendi S.A.R.L v. Google LLC
In this case the PTAB gave two alternative reasons for finding claims obvious. The Federal Circuit affirmed the decision based on only one of them. In doing so, the Federal Circuit criticized the PTAB for having disregarded a clear prosecution history disclaimer in its use of the broadest reasonable interpretation of the claims.

19. SAS Institute Inc. v. ComplementSoft LLC
On November 27, 2017 Supreme Court heard oral argument on the question of
Whether 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review "shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner," requires that Board to issue a final written decision as to every claim challenged by the petitioner, or whether it allows that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the U.S. Court of Appeals for the Federal Circuit had held.

20. The significance of this question is that the 35 USC 315(e) provides
The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318(a) , or the real party in interest or privy of the petitioner, may not
1) 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 inter partes review… [or]
2) assert either in a civil action … or in a proceeding before the International Trade Commission … that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

21. Thank You!
Feel Free to direct any questions you may have to: Presenter: John Richards  