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!