Do Recent Decisions Signal a Change in Patent Owner’s Rights to Defend and Amend Claims in Post-Grant Proceedings?

By David Thibodeau
February 6, 2018

Do Recent Decisions Signal a Change in Patent Owner's Rights to Defend and Amend Claims in Post-Grant Proceedings?Ever since the introduction of AIA post-grant proceedings, many have questioned whether the procedural deck is stacked against patent owners.  Limits on making claim amendments, having to bear the burden of showing the validity of claims already issued, and being subjected to multiple serial attacks, certainly have made it seem so.  But have recent cases signaled the playing field may now be tipping ever so slightly in a patent owner’s favor?  Or are these decisions just an illusion?

Aqua Products v. Matal

Aqua Products v. Matal,  872 F.3d 1290 (Fed. Cir. Oct. 4, 2017) (en banc) held that the PTAB can no longer place the burden of establishing the patentability of amended claims on the patent owner.  This was a complete reversal of the CAFC’s prior findings in cases such as Microsoft v. Proxyconn, 789 F.3d 1292 (Fed. Cir. 2015);  and Synopsys v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016), with the controlling opinion explicitly stating it was overruling those earlier cases.  Muddying the waters, however, is that some of the CAFC judges justified their opinion because the Patent Office has not promulgated appropriate notice-and-comment rulemaking on point, leaving the door left open for the PTAB to issue clarifying regulations.

Affordable Drugs VI, LLC, v. Celgene Corporation

Affordable Drugs VI, LLC, v. Celgene Corporation IPR2015-01096, Paper 78 (September 8, 2017).  Here the PTAB granted a rare request by the patent owner for rehearing in three parallel IPRs.  The single patent at issue in all three proceedings is directed to methods of distributing teratogenic drugs (such as Thalidomide) in a way that restricts access to patients that have an acceptable risk profile.  An initial PTAB hearing found the claims obvious; Celgene requested a rehearing.  The request, granted by the PTAB, alleged that the Petitioner had not provided sufficient evidence to prove that genetic testing for the claimed purpose was “common,” and, significantly, that the initial finding had impermissibly shifted the burden onto Celgene to show that genetic testing was not known in the art for the claimed purpose.  Perhaps this decision and others like it will signal that any new rules regarding the burden of proof coming from the Patent Office will be consistent with the controlling opinion in Aqua Products.

General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha

General Plastic Industrial Co. Ltd. v. Canon Kabushiki Kaisha IPR2016-01357, Paper 19 (Sept. 6, 2017) (marked precedential). Petitioner General Plastic filed a first set of petitions seeking IPR of several patents owned by Canon, and institution was denied. Nine months later Petitioner filed five follow-on petitions against the same patents. An expanded panel then denied institution of all five follow-on IPRs. This case provides a lengthy review of the factors first set forth by the PTAB’s in Nvidia Corp. v. Samsung Elec. Co., No. IPR2016-00134 (Paper 9) (May 6, 2016), and a reminder that such factors “take undue inequities and prejudices to [the] Patent Owner into account.” Although multiple IPR petitions from the same party are not prohibited, it is now clear that subsequent petitions merely attempting to cure deficiencies in a earlier petition will be denied.

Taiwan Semiconductor Manufacturing Co. Ltd. v. Godo Kaisha IP Bridge 1

Taiwan Semiconductor Manufacturing Co. Ltd. v. Godo Kaisha IP Bridge 1, IPR2016-01249, Paper 46 (Dec. 12, 2017) was a situation where the PTAB granted a patent owner’s motion to amend claims.  The grant was conditioned upon the patent owner (1) re-writing the dependent claim in independent format, and (2) replacing three recitations of “being composed of” with “consisting essentially of”.  Cases like this are certainly worth paying attention to — future PTAB panels may actually offer proposals that will then permit amended claims to be entered!

The Author

David Thibodeau

David Thibodeau is a Partner in VLP’s Intellectual Property Practice Group. His practice emphasizes the building and refining of patent portfolios, strategic advice concerning competitive IP rights, and due diligence for technology-based financial, merger/acquisition and other business transactions. David most often handles prosecution matters before the United States’ and foreign patent offices, but he has also successfully concluded litigations and other disputed matters. He regularly works with company founders, investors, engineers and scientists across the information technology industry in areas such as data storage, database systems, financial services, social media, network security, medical devices, semiconductors, optics, signal processing, and antennas.

For more information or to contact David, please visit his Firm Profile Page.

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Discuss this

There are currently 7 Comments comments.

  1. Night Writer February 6, 2018 8:43 am

    They are trying to shine up their sh*t to convince the SCOTUS not to eliminate them.

  2. Anon February 6, 2018 9:58 am

    I have that impression as well.

    Except for the fact that in other (recent) cases, that cannot seem to be able to hide their addiction to power.

  3. Bemused February 6, 2018 11:27 am

    Anon@2: “…cannot seem to be able to hide their addiction to power.” Well said.

  4. Annoymous February 6, 2018 5:53 pm

    The prospect of amendment is great conceptually, but, if you amend during a litigation, don’t you lose the intervening rights? Likely your damages case just got gutted – past damages wise – yes?

  5. David Thibodeau February 7, 2018 12:15 pm

    Intervening rights are always a consideration. But isn’t it better to have a patent with amended claims intact and infringed – than no patent at all? T

  6. Roger Heath February 8, 2018 3:42 am

    “Replacing three recitations of “being composed of” with “consisting essentially of”.

    Care to explain? Is “being composed of” never acceptable now?

  7. Theodore Chiacchio February 8, 2018 4:17 pm

    It seems that if PTAB panels are permitted to propose claim amendments without any uniform set of rules as to the circumstances under which such proposals may be made, this may result in unfairness in that a patentee who is lucky enough to be in front of a panel where none of the presiding judges typically make such proposals will be left with cancelled claims whereas another patentee who draws a more activist panel will walk away with amended claims.

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