Tag Archives: scotus

Power to the Patent Office! No Judicial Review of IPR Time Bars

Patent applications are routinely a back and forth process between the patent applicant and the Patent Office. In some rare situations, a third party can submit evidence of prior use to the USPTO during the application process. However, the third party cannot actively participate in the application process.

After a patent is granted, third parties are increasingly using inter parties reviews (IPR) to challenge claims to an issued patent. An IPR is conducted at the Patent Trial and Appeal Board (PTAB) where it will review the patentability of one or more claims based on Section 102 (anticipation) or Section 103 (obviousness).

In a recent decision by The Supreme Court of the United States (SCOTUS) in Thryv v. Click-to-Call, the Court was tasked with deciding whether 35 U.S.C. 314(d) permits judicial review of the PTAB’s decision to institute an IPR upon finding that Section 315(b)’s time bar did not apply. Section 314(d) states that “[t]he determination by the Director [of the Patent Office] whether to institute an inter parties review under this section shall be final and nonappealable”. Section 215(b), the time bar, states that “[a]n inter parties review may not be instituted if the petition requesting the proceedings us filed more than one year after that date on which the petitioner … is served with a complaint alleging infringement of the patent”.

Despite the long procedural history, the case boils down to whether there should be judicial review of the PTAB’s decision or is the action is limited to the Director of the Patent Office. In a 7-2 majority opinion written by Justice Ginsburg, the Court held that there is no judicial review of the USPTO’s authority to decide whether a party properly petitioned under the AIA within a year of being sued for patent infringement, or was in privity with a supplier, business partner or other party who had been sued.

The unsettling part of this opinion is that the USPTO admitted that the IPR proceeding should not have been instituted due to the privity of the underlying parties and resulting time bar. However, SCOTUS’ decision says a time bar decision is not judicially reviewable under Sections 314(b) and 315(d). Justice Giunburg stated that the language supports the Patent Office’s goal of removing bad patents.

The result will cede more power to the Patent Office’s Precedential Opinion Panel (POP), where PTO management, including Director Andrei Iancu, exercises discretionary review over panel decisions.

The Intellectual Property team at Assouline and Berlowe includes two Registered Patent Attorneys, Peter Koziol and Greg Popowitz. For any questions about the case or how to handle your patent strategy, please contact our office below.

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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Patent Claim Construction: SCOTUS says – Do Not Disturb!

Do Not DisturbSociety at large is becoming very familiar with patents from shows like The Shark Tank.  Investors repeatedly want to know if your new company has a product that is protected.  Meaning, can you stop someone else in the marketplace from making and selling a product like yours?  A patent does not give you the right to make your product, it gives you the right to stop others from making, using, or selling the invention claimed in your patent.  Did you notice the distinction between your product and what is claimed in the patent?

It is a bedrock principle of patent law that the claims of a patent define the invention.  Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).  This is difficult to understand since you are claiming the boundaries of an intangible object, intellectual property.  Try this comparison.  When you purchase a piece of real property (land), the boundaries are defined by the metes and bounds of that property.  Want to know where to put a fence?  Is this your property or the city’s?  Check the survey and the metes and bounds.  That is exactly what the claims of a patent do.  They define the outer boundaries of your invention.  It is not merely a picture of your product, it is the boundary of what your invention covers.

As part of any patent litigation, the judge will construct claims that are in dispute by both parties.  Parties will often have differing interpretations of what a word or phrase in a patent claim means, which has far reaching implications to the liability of the alleged infringer.  The judge will decide at a Markman hearing what the word/phrase in the claim means and that will be the definition used by the court and potentially the jury in determining whether the other party infringed the claims of your patent.

In a recent decision, the Supreme Court of the United States held in Teva Pharmaceuticals USA, Inc., et al. v. Sandoz, Inc., et al., No. 13-854 (January 20, 2015) that when the district court uses extrinsic evidence during claim construction (information outside of the patent specification itself), the appellate court must use a “clear error” standard of review.  Extrinsic evidence could be dictionaries, experts in the industry.   If the district court only looks at the intrinsic evidence, information disclosed in the patent itself, the appellate court should continue to use a de novo standard of review.

The rationale is based on the premise that when the district court looks at evidence outside evidence for claim construction, the court is making a factual finding regarding the dispute.  Based on this factual finding, the judge is interpreting the claim term.  As a result, the appellate court must look at the factual finding under a clear error standard of review.  The Supreme Court stated that when only the information contained in the patent itself is used to determine the meaning of a patent claim term, it is a legal determination and should be reviewed under a de novo standard.

If you have any questions about the patent process, contact Mr. Popowitz below.

Greg M. Popowitz, Esq.

Registered Patent Attorney

AV Rated by Martindale-Hubbell

Intellectual Property Litigation

ASSOULINE & BERLOWE, P.A.

213 East Sheridan Street, Suite 3

Dania Beach, Florida  33004

Main: 954.929.1899

Fax: 954.922.6662

Email: GMP@assoulineberlowe.com

http://www.assoulineberlowe.com/

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