To wrap up 2019 and usher in 2020 for practitioners who handle Patent Trial and Appeal Board (PTAB) matters, Foley partners Jeanne Gills, Steve Maebius, and George Quillin discussed 2019’s major developments in a webinar on January 23, 2020.
The discussion included:
The number of IPR petitions filed fell in 2019. PGR petitions fell even more so, albeit from 2018’s all-time high. CBM petitions trickled almost to a complete stop—the lowest number since the passage of the America Invents Act—in anticipation of the 2020 sunset of the CBM pathway. In the last three years, PGRs have almost doubled as a proportion of all petition types, but this may be due to a decrease in IPRs and a more significant decrease in CBMs. Institution rates have also crept steadily downward, perhaps reflecting the SAS decision’s all-or-nothing institution requirement.
This year, the Supreme Court only addressed the PTAB in one case: Return Mail v. U.S. Postal Service, 139 S. Ct. 1853 (June 10, 2019). In Return Mail, the Postal Service sought CBM review of Return Mail’s patent. The Court held, however, that a federal agency is not a “person” able to seek post-issuance administrative review of the validity of a patent under the America Invents Act. In doing so, the Court emphasized that the presumption against treating the government as a “person” in statutory language applies. Although the direct effects of the case may not be felt very broadly, as the federal government files very few petitions, it further highlights a recent trend of the Supreme Court aligning patent law with other substantive doctrines—what some have referred to as addressing not circuit splits but “field splits.”
The aftermath of SAS Institute v. Iancu, 138 S. Ct. 1348 (2018), continues to be felt in Federal Circuit decisions that implicate potential strategic considerations at the PTAB. For instance, in BioDelivery Sciences v. Aquestive Therapeutics, 935 F.3d 1362 (Aug. 29, 2019), the Federal Circuit held that because the PTAB has unappealable discretion to institute petitions, it need not institute even on post-SAS remand even if it previously found a reasonable likelihood that the petitioner would prevail. Thus, even for a petition with some strong grounds, if others are weak, the PTAB may deny the entire thing in the interests of administrative efficiency. On the discretionary-denial front, the PTAB also recently designated various related cases as precedential, including NHK Spring Co. v. Intri-Plex, IPR2018-00752 (PTAB Sept. 12, 2018) (in which advanced stage of district court proceedings rendered IPR inefficient), and Valve Corp. v. Electronic Scripting Products, IPR2019-00062 (PTAB Apr. 2, 2019) (in which multiple petitions from similarly situated petitioners weighed against review).
Additionally, the advent of the PTAB’s Motion to Amend (MTA) pilot program prompts additional strategic considerations.
Several Federal Circuit decisions affected statutory aspects of the PTAB, including real-party-in-interest considerations, grounds in final written decisions, and the time bar.
The USPTO recently revised its Standard Operating Procedures, including creation of the Precedential Opinion Panel (POP). The POP operates at the discretion of the Director to decide issues of “exceptional importance” to the PTAB, with its members being the Director, the Commissioner, and the chief PTAB judge. The POP is empowered to (1) conduct Precedential Opinion Panel review of recently issued Board decisions, (2) designate issued decisions as “precedential” or “informative,” and (3) de-designate such decisions to “routine.” POP Review is only available by “recommendation” following procedures in the PTAB’s revised SOPs. The Federal Circuit is currently considering whether the POP deserves Chevron deference in Facebook v. Windy City Innovations, No. 2018-1400.
In 2019, the PTAB designated 19 decisions as precedential and 13 as informative. Further, three POP Review decisions were made in 2019:
In July 2019, the USPTO published a second update to the AIA Trial Practice Guide (first update was August 2018), and a consolidated guide in November 2019. Guidance included in the 2019 update included the following:
2019 saw numerous questions around whether the Supreme Court would further address subject-matter eligibility issues under § 101. But the Supreme Court’s recent denial of three pending cert petitions implies that the Court may pass on these issues for the time. In contrast, the PTAB has been using its precedent-setting procedures to address subject-matter eligibility at the USPTO. In 2019, it designated six opinions in ex parte appeals for electronic technologies that apply the USPTO’s 2019 revised § 101 guidance. It remains open whether the PTAB will similarly apply the guidance to life-sciences products in 2020.
There are few pending cert petitions currently on PTAB issues. The Supreme Court will address the appealability of time bar decisions in Thryv, Inc. v. Click-to-Call Technologies, LP, which was argued December 9, 2019; specifically, the Court will decide if time-bar determinations affecting institution are unappealable just because 35 U.S.C. § 314(d) states that the decision whether to institute an IPR is unappealable. One PTAB case has also been granted review by the Precedential Opinion Panel: Hunting Titan v. DynaEnergetics, IPR2018-00600, which asks about the Board’s ability to raise grounds of unpatentability on its own.