June is busiest month for PTAB filing of 2016

According to the Docket Navigator database, 176 PTAB petitions were filed in June, consisting of 166 inter partes review (IPR), nine covered business method and one post-grant review (PGR) petition.

This made it comfortably the busiest month for petition filing so far this calendar year, ahead of February’s 150 petitions. This was despite it being the lowest month for CBM petitions since January 2016 and for PGRs since March 2016.

Despite the strong month, the year is still down on the 2015’s record rate of filing. The 825 cases in the first half of this year was down from 957 in the first half of last year, but up from 744 in the first half of 2014.

According to Managing IP’s analysis of data taken from the Docket Navigator database, the entities that filed the most petitions in June were Microsoft and Samsung, both with 15. They were followed by Apple, Fujifilm, Mylan and Olympus, which all filed 13 petitions.

The most-targeted patent owner was Papst Licensing, which was the target of 12 petitions. It was followed by Windy City Innovations, the patent owner in 11 petitions, and Focal IP and Fontem Holdings, which were the targets in 10 petitions each.

Petitioners with more than one filing in June 2016			Patent owners named in more than one  petition in June 2016
Petitioner	Count		Patent owner	Count
Microsoft	15		Papst Licensing	12
Samsung	15		Windy City Innovations	11
Apple	13		Focal IP	10
Fujifilm	13		Fontem Holdings 1	10
Mylan Pharmaceuticals	13		Allergan	7
Olympus	13		AstraZeneca	7
Canon	11		FibroGen	6
JVC KENWOOD	11		Evolved Wireless	5
Nikon	11		United Technologies	5
Panasonic	11		Aristocrat Technologies	4
Nu Mark	10		Evolved Wireless	4
GlaxoSmithKline	6		Godo Kaisha IP Bridge 1	4
Birch Communications	5		Ono Pharmaceutical	4
Bright House Networks	5		Parthenon Unified Memory Architecture	4
Facebook	5		Tasuku Honjo	4
General Electric	5		WAG Acquisition	4
Knology of Florida	5		Racing Optics	3
Merck Sharp & Dohme	5		Trading Technologies International	3
WideOpenWest Finance	5		University of Florida Research Foundation	3
IGT	4		Advanced Media Networks	2
Taiwan Semiconductor Manufacturing	4		Advanced Silicon Technologies	2
WebPower	4		Braemar Manufacturing	2
Aevoe	3		CardioNet	2
Covidien	3		Eli Lilly and Company	2
HTC	3		FastVDO	2
MagicJack Vocaltec	3		Global Tel*Link	2
YMax	3		IPS Group	2
ZTE USA	3		Janssen Oncology	2
Acuity Brands Lighting	2		Kimberly-Clark Worldwide	2
Alarm.com	2		Lynk Labs	2
Argentum Pharmaceuticals	2		Research Corporation Technologies	2
Charter Communications	2		Securus Technologies	2
Cisco Systems	2		Smart Destinations	2
CivicSmart	2		Sony	2
Duncan Parking Technologies	2		Vivint	2
First Quality Baby Products	2		Voip-Pal.com	2
Global Tel*Link	2		YETI Coolers	2
IBG	2		Yodlee	2
InfoBionic	2
Interactive Brokers	2
iVenture Card Travel	2
Mercedes-Benz USA	2
Metaswitch Networks	2
Plaid Technologies	2
RTIC Coolers	2
Securus Technologies	2
Texas Instruments	2
TradeStation	2
Unified Patents	2
Velky Brands	2
Wockhardt Bio	2
Source: Docket Navigator

June saw a number of important decisions relating to PTAB appeals.

The Supreme Court issued its first PTAB opinion in Cuozzo v Lee, affirming the PTAB’s standard for claim construction. The ruling indicates that the Court believes the USPTO is performing its IPRs in accordance with the America Invents Act.

Soon after that, the Supreme Court vacated the Federal Circuit’s dismissal of the appeal in Click-to-Call Technologies v Oracle, and remanded for proceedings consistent with the Cuozzo decision. Click-to-Call had petitioned the Supreme Court to consider whether the Board’s assessment of § 315(b), which states that an IPR must be filed by  a party within one year of a complaint alleging infringement of the patent, is reviewable on appeal after the Board issues its final written decision. The “No Appeal” provision in 35 USC § 314(d) states that the “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable”.

As Marshal Gerstein noted on its PTABWatch blog: “The Federal Circuit will now have to reinterpret the No Appeal provision, which it has used – wrongly, according to many – to confine the scope of its own jurisdiction.”

In the most-important Federal Circuit opinion on a PTAB appeal in June, the appeals court ruled in SAS Institute v ComplementSoft that the Patent Trial and Appeal Board was wrong to use a new claim construction without giving parties a chance to respond. Practitioners said this would have a big impact on trial and appeal practice.

Soon after this came Genzyme Therapeutic Products v BioMarin Pharmaceutical, in which the Federal Circuit ruled the patent owner was not denied notice or an opportunity to respond to references cited in the final written decision that were not grounds for the institution decision. The court noted: “[T]he introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings and, as long as the opposing party is given notice of the evidence and an opportunity to respond to it, the introduction of such evidence is perfectly permissible under the APA.”

Scott McKeown of Oblon said on the Patents Post-Grant blog: “Simply stated, this decision is an AIA trial practice game changer.”

McKeown said the practice of preparing the most comprehensive petition possible will still hold, given the ability of patentees to present new evidence in their preliminary responses pointing out an evidentiary or legal oversight. “Yet, Genzyme has offered comforting clarity to petitioners, and makes decisions to institute AIA trial proceedings all the more formidable for patentees,” he said.

Other Federal Circuit decisions of note include it denying an en banc rehearing of Ethicon Endo-Surgery v Coviden, thus underlining that that same PTAB panel can both institute a proceeding and give the final decision (Judge Newman dissented).

In a notable decision from the PTAB, the Board invalidated two patents in its first PGR final written decisions. The two patents in the final written decisions issued June 13 were owned by Leachman Cattle of Colorado, and were invalidated on Section 101 grounds. Some claims in one of the patents were also deemed obvious.

AIA filings by month
Month	Number of petitions filed
	IPR	CBM	PGR	Total
Sep 2012	17	8	0	25
Oct 2012	24	5	0	29
Nov 2012	24	2	0	26
Dec 2012	32	0	0	32
Jan 2013	25	0	0	25
Feb 2013	30	0	0	30
Mar 2013	38	2	0	40
Apr 2013	27	4	0	31
May 2013	45	7	0	52
Jun 2013	65	8	0	73
Jul 2013	69	3	0	72
Aug 2013	62	9	0	71
Sep 2013	73	8	0	81
Oct 2013	77	19	0	96
Nov 2013	89	18	0	107
Dec 2013	101	11	0	112
Jan 2014	60	9	0	69
Feb 2014	54	12	0	66
Mar 2014	76	22	0	98
Apr 2014	143	14	0	157
May 2014	131	19	0	150
Jun 2014	184	6	0	190
Jul 2014	116	10	0	126
Aug 2014	159	16	1	176
Sep 2014	120	21	1	142
Oct 2014	179	16	0	195
Nov 2014	102	13	1	116
Dec 2014	177	15	0	192
Jan 2015	100	14	1	115
Feb 2015	164	16	0	180
Mar 2015	131	13	1	145
Apr 2015	139	7	0	146
May 2015	145	26	3	174
Jun 2015	182	9	2	193
July 2015	117	6	0	123
Aug 2015	165	9	3	177
Sep 2015	136	5	0	141
Oct 2015	106	11	0	117
Nov 2015	131	10	1	142
Dec 2015	138	5	1	144
Jan 2016	96	3	0	99
Feb 2016	132	12	6	150
Mar 2016	107	10	1	118
Apr 2016	136	10	2	148
May 2016	114	17	4	135
Jun 2016	166	9	1	176
Cumulative Total	4,704	469	29	5,202
Source: USPTO

The PTAB has also started applying the Federal Circuit’s ruling in Enfish v Microsoft, with mixed results.

Enfish was only the second time the Federal Circuit had allowed a software patent to survive a Section 101 claim since the Supreme Court’s Alice ruling (the appeals court has since allowed a third, in its June 27 Bascom v AT&T decision). The Federal Circuit stated in Enfish: “We do not read Alice to broadly hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.” 

On May 26, the PTAB denied institution of a CBM petition challenging a patent directed to a system for managing personal electronic information, in Apple v Mirror Worlds. The Board found that the claimed method was directed to a financial product based on embodiments of the patent that describe using the claimed method to manage a stock portfolio or to track checking and savings accounts.

Applying Enfish, the PTAB found that the claimed method did not recite an abstract idea. Kenyon & Kenyon on its IPR Blog noted: “Of key interest to practitioners, the Board was persuaded by Mirror World’s reliance on discussion in the specification to show that the ’227 patent addresses problems arising specifically in the realm of computer systems.”

However, on May 31 in Informatica v Protegrity the Board held that patent claims were ineligible under Section 101 despite Enfish. It cancelled claims relating to a data security system for databases, saying they were directed to an abstract idea and recite ineligible subject matter. It also determined that some claims were unpatentable under Section 103.

Enfish was decided after the completion of briefing and oral arguments in Informatica, but the Board addressed it in its holding regarding step two of the Alice test. Referencing Enfish, the Board stated: “We are also mindful of recent admonishments by the Federal Circuit that the first step of our analysis should not be pro forma when the claims are directed to improvements in software … We are not persuaded, however, that the instant claims are directed to a specific improvement to the way computers operate.”

Kenyon & Kenyon concluded: “Both of these decisions turned on the Board’s the conclusion as to whether the patent claimed generic computer functionality carrying out conventional activity, or a specific technical solution to a technical problem occurring only in the realm of computer processes.” The law firm added: “Patent owners and challengers alike should be prepared to point out the presence (or absence) of supporting discussion from the specification.”

In a client note, Mintz Levin said the Informatica decision is perhaps surprising given that it and Enfish both involved database technology.

“Informatica suggests that, in the first place, the PTAB does not regard Enfish as the seminal decision that other commentators and indeed even the PTO have hailed it as,” wrote Brad Scheller and Harold Laidlow of Mintz Levin. “Litigants are well-advised to specifically analyse and analogize their cases as closely as possible to Enfish and its claims rather than relying solely on the similarity of subject matter. Enfish at the PTAB will not automatically preserve even database-specific claims from Alice part one – let alone of software patents at large.”

In another recent noteworthy decision, the PTAB on May 23 denied a petitioner’s motion to change the filing dates of two IPR petitions because it missed the statutory deadline by 10 minutes. The IPR petitions were filed by Teva against patents owned by Monosol RX.

A legal assistant handling the IPR filings on behalf of petitioner Teva started filing the petitions on the evening of the day of the one-year statutory deadline from when it had been sued for patent infringement. The assistant faced technical difficulties, including slow processing and rejected payments, and was eventually issued filing notifications for the two IPRs at 12.01am and 12.09am the next day.

Number of AIA petitions, as of May 31 2016
USPTO fiscal year  (Oct 1-Sept 30)	Total	IPR	CBM	PGR
2012	25	17	8	0
2013	562	514	48	0
2014	1,489	1,310	177	2
2015	1,897	1,737	149	11
2016	1,229	1,126	87	16
Cumulative	5,202	4,704	469	29
Source: USPTO

The Board noted that Teva had neither served the petition on the patent owner nor paid the applicable fee before midnight. It added that Teva had not provided objective evidence such as screen shots that the difficulties were solely because of the Patent Review Processing System.

Foley & Lardner on its PTAB Trial Insights blog commented: “This decision highlights the need to avoid last-day filings because the Board may not be readily persuaded to show mercy to the late-filer. In distinguishing earlier decisions sympathetic to the late-filing petitioner, the Board noted that the decisions were non-precedential, suggesting that the Board would retain its discretion to grant or deny motions on more similar facts.”

The legal assistant in that case might be interested to note that the USPTO on July 5 announced that the Patent Review Processing System was being replaced with a new system called Patent Trial and Appeal Board End to End (PTAB E2E). 

PTAB E2E uses a web browser (Chrome is the preferred browser) and a step-by-step filing programme to enable petitioners and patent owners to provide metadata and upload PDF documents to the system. PTAB E2E also provides an interface to the USPTO Next Generation financial system for paying fees.

The target date to deploy PTAB E2E is July 9 2016.