“I believe that they are listening to popular criticisms of the PTAB and are attempting to make [America Invents Act] trials more fair and balanced.” – Stephen Kunin
On May 7, the U.S. Patent and Trademark Office (USPTO) designated two recent decisions of the Patent Trial and Appeal Board (PTAB) as precedential, bringing the number of PTAB decisions declared precedential since the beginning of this March to 11. The recently designated decisions, both of which resulted in the denial of institution in inter partes review (IPR) proceedings, appear to be part of a general trend to designate as precedential patent owner-friendly decisions denying the institution of PTAB trials.
NHK Spring: Advanced Stage of District Court Proceeding Renders IPR Inefficient
The first of these recent precedential designations was NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc., an IPR proceeding that was denied institution last September. NHK Spring had requested an IPR to challenge the validity of four claims of U.S. Patent No. 6183841, titled Optimized Low Profile Swage Mount Base Plate Attachment of Suspension Assembly for Hard Disk Drive. The patent covers a disk head assembly having a low-profile base plate which addressed a need for increased data storage capacity in hard disk drives.
In this case, the panel of administrative patent judges (APJs) exercised their discretion under 35 U.S.C. §§ 314(a) and 325(d) to deny institution of the IPR. In denying institution under Section 325(d), the panel of APJs applied factors from the PTAB’s precedential decision in Becton, Dickinson & Co., determining that the prior art asserted by the petitioner was already considered by the examiner issuing the patent, that the patent owner had already overcome rejections based on that prior art, that the petitioner relied upon similar analysis of the prior art already considered by the examiner, and that the petitioner hadn’t sufficiently pointed out how the examiner erred in its evaluation of the prior art. In denying institution under Section 314(a), the APJs found that the district court proceeding involving the ‘841 patent, in which NHK Spring also asserted the same prior art and invalidity arguments, was nearing its final stages and thus institution of the IPR, which wouldn’t conclude until September 2019, wouldn’t achieve the America Invents Act’s objective of providing an efficient alternative to district court proceedings.
Valve Corporation: No Institution of IPR After Multiple Petitions from Similarly Situated Petitioners
The second PTAB opinion recently marked as precedential was Valve Corporation v. Electronic Scripting Products, Inc. The panel included USPTO Director Andrei Iancu and Vice Chief Administrative Patent Judge William Fink. Valve filed the IPR petition to challenge the validity of U.S. Patent No. 9235934, titled Computer Interface Employing a Wearable Article With an Absolute Pose Detection Component. The patent covers a wearable article, such as virtual reality glasses, which is effective at measuring the absolute pose of objects manipulated in three-dimensional environments in a way that achieves low-cost, robust and accurate absolute motion capture.
This petition was also denied under Section 314(a) after the panel applied the factors stemming from the PTAB’s precedential decision in General Plastic. These factors govern situations where a panel may use its discretion to deny a petition that follows an earlier petition challenging the same patent using similar prior art and grounds for invalidity. Unlike General Plastic, however, the petition in Valve Corporation was denied based on an earlier petition from a different challenger instead of multiple petitions from a single challenger.
The ‘934 patent challenged by Valve was part of a patent infringement suit brought in U.S. district court by Electronic Scripting against HTC America. Valve was originally listed as a co-defendant in this suit before being dismissed without prejudice by Electronic Scripting after Valve filed a motion to challenge venue in the case. HTC would go on to petition for an IPR proceeding to challenge the ‘934 patent but that IPR was denied institution. Electronic Scripting argued that the PTAB should also deny Valve’s petition because it challenged the same patent claims as HTC and waited until after the Board reviewed HTC’s petition, making it an unfair follow-on petition. In weighing the General Plastic factors, the panel determined that while Valve was a different petitioner, its relationship as a co-defendant with HTC was significant and weighed against institution. Other factors that weighed against institution included Valve’s likely knowledge that its prior art was previously asserted by HTC, Valve’s access to the PTAB’s decision to deny institution to HTC’s IPR before Valve filed its own IPR decision, Valve’s ability to file its own IPR petition at around the same time that HTC filed its petition, and Valve’s creation of efficiency concerns by filing three IPR petitions.
Discerning the Trends in PTAB Precedential Designations
Since the USPTO changed the standard operating procedures of the PTAB last fall to create the Precedential Opinion Panel (POP), which consists of the USPTO Director, the Commissioner for Patents and the PTAB’s Chief Judge, the approval process for designating precedential opinions has changed and more designations are being made, according to Stephen Kunin, Partner at Maier & Maier PLLC. In the cases being designated as precedential, Kunin sees a trend that will likely result in fewer decisions to institute PTAB trials, thus appearing to favor patent owners. “I believe that they are listening to popular criticisms of the PTAB and are attempting to make [America Invents Act] trials more fair and balanced,” he said. “It appears that they are taking corrective administrative actions to preempt Congressional action to change the law governing AIA trials.”
The impact of recent U.S. Supreme Court case law was likely at play in the NHK Spring decision, according to Kunin. “I see the effect of SAS Institute v. Iancu influencing the PTAB’s action to exercise its discretion not to institute when the district court is already far along in addressing the invalidity contentions,” he said. “I believe that the fact that the district court was in the final stages of rendering its decision applying the same claim construction, the same prior art and the same arguments was the primary factor to deny institution.” In assessing Valve Corporation, Kunin noted that the decision will likely require petitioners to make stronger arguments when challenging a patent that has already survived a decision to institute an IPR. “The PTAB is responding to criticisms regarding ‘too many bites at the apple’ being given to petitioners based on the same arguments and evidence or based on prior art that reasonably could have been used in a prior petition,” he said. However, he added that the decision will have less effect on petitioners who aren’t part of a joint defense agreement.
While NHK Spring and Valve Corporation are the two most recent precedential designations at the PTAB, Kunin noted that two other decisions marked as informative on April 5 are also of interest to those who practice law at the PTAB. This included Chevron Oronite Company LLC v. Infineum USA L.P., decided last November, and Deeper, UAB v. Vexilar, Inc., decided this January. “These decisions involve denials under [Section] 314(a) based on an insufficient number of proposed grounds or challenges to the claims to meet the ‘reasonable likelihood’ standard,” Kunin said. The PTAB denied Chevron Oronite after petitioners showed a reasonable likelihood of prevailing on only two claims out of a total of 20 challenged claims, and Deeper, UAB was denied after petitioners showed a reasonable likelihood of prevailing on two claims out of 23 challenged claims and as to only one ground of invalidity out of four grounds that were asserted.
Precedential Action on One-Year Time Bar Still to Come
More action out of the PTAB POP that continues the trend favoring patent owners could be coming this year. On April 17, patent owner 360Heros filed a request for rehearing to apply the one-year time bar under 35 U.S.C. § 315(b) in GoPro, Inc. v 360Heros, Inc. The APJ panel in that case declined to apply the one-year time bar despite the fact that GoPro filed its petition for IPR after August 22, 2017, the date one year after it was served with 360Heros’ counterclaim for infringement of the patent it later challenged through IPR. Instead, the panel found that the district court’s grant of summary judgment in November 2017 for lack of standing revived the time to file the IPR petition. However, citing to the Court of Appeals for the Federal Circuit’s 2018 decision in Click-to-Call Technologies, LP v. Ingenio, Inc., 360Heros argued that “[t]he statute plainly and unambiguously precludes institution of an IPR more than one year after ‘a party receives notice through official delivery of a complaint in a civil action, irrespective of subsequent events.’” On May 10, the PTAB POP issued an order determining that the decision to institute the GoPro IPR warranted review.