United States: PTAB Newsletter

Q&A with Arnold & Porter PTAB Practitioner Aaron Bowling

Aaron joined Arnold & Porter's IP practice in November 2021 after more than eight years of practice, including a judicial clerkship with Judge Jimmie V. Reyna of the U.S. Court of Appeals for the Federal Circuit.

How would you describe your practice?

I've had the good fortune of working on our Nike litigation team for many years, assisting on patent and trademark litigations in district court, appellate court, the PTAB, and the International Trade Commission. Thanks to the Nike team's leadership, those litigations have provided a wealth of fantastic opportunities, from the deposition room to counsel table to boardrooms on Nike campus. Aside from Nike, I focus mostly on appellate work. Leveraging my prior clerkship experience, I've joined a variety of teams litigating appeals at the federal circuit — assisting with both brief writing and oral argument preparation. I've also been fortunate to assist with several pro bono cases before the U.S. Supreme Court.

How long have you been practicing in front of the USPTO and in front of the PTAB?

I first began practicing before the PTAB in 2014 (which is somehow nine years ago). Since then, I've worked on dozens of IPR proceedings, including six petitions currently pending before the PTAB.

What do you enjoy about practicing at Arnold & Porter?

I'm constantly impressed with the breadth of knowledge and talent at Arnold & Porter. We seem to have experts in every corner of the legal field, and it has been great to learn from such accomplished individuals. Because of this, our firm has proven to be an excellent place to grow as an attorney. With the help of our IP group's leadership, I've been able to pursue a number of exceptional opportunities in the appellate space and with professional organizations like the Federal Circuit Bar Association.

What do you like to do in your spare time?

I love traveling and spending time outdoors. I enjoy golfing, running, hiking, skiing, and doing anything near or on the water. We're taking our kids (ages 5 and 2) skiing for the first time in Big Sky, Montana next month, and my wife and I are celebrating our ten-year anniversary in the fall on the Argentario Coast of Tuscany, Italy

Q&A with Arnold & Porter PTAB Practitioner Victoria Reines

Victoria has been part of Arnold & Porter's IP practice for seven years (briefly with Kaye Scholer before they merged with Arnold & Porter). She was also a summer associate with Kaye Scholer in her second year in law school.

How would you describe your practice?

My practice is complex patent litigation with a focus on life sciences and biotechnology. Most of my matters relate to large molecules, but I also have experience with small molecules and medical devices. I have worked on cases before the Federal Circuit, United States district courts, Patent Trial and Appeal Board, International Trade Commission, and most recently before the U.S. Supreme Court.

How long have you been practicing in front of the USPTO and in front of the PTAB?

I've been practicing before the USPTO and PTAB for six years.

How would you like to grow your practice before the PTAB/USPTO?

The firm is currently involved in a significant number of PTAB proceedings. I would like to continue working on matters before the PTAB and gain exposure to more administrative patent judges. I also look forward to arguing before the PTAB.

What do you enjoy about practicing at Arnold & Porter?

I love the people at Arnold & Porter. I have built amazing relationships with so many colleagues. The firm also provides associates with substantive opportunities. Instead of adhering to a strict hierarchy, the group seeks out opportunities for associates to, for example, take and defend depositions and argue motions, regardless of class year. Multiple partners have encouraged me to argue motions before district court judges as a mid-level associate, and although I was initially intimidated, they turned out to be wonderful experiences.

What do you like to do in your spare time?

I enjoy spending time with my 15-month-old son and husband — usually chasing my son around the house and neighborhood now that the weather is getting nicer. I also love traveling and look forward to traveling more as my son gets older.

Recent MPEP Updates

On March 3, 2023, the USPTO (Office) announced publication of a revised version of the Manual of Patent Examining Procedure (MPEP) in the Federal Register. The revised MPEP (ninth edition, revision 07.2022) is retroactive to July 2022.

Changes to the MPEP, which largely clarify guidance and incorporate recent changes in the extant case law, affect chapters 100, 200, 400, 500, 600, 700, 800, 900, 1000, 1100, 1200, 1300, 1400, 1500, 1700, 1800, 2000, 2100, 2200, 2400, 2500, 2700, 2800, 2900, and FPC (Form Paragraph Book). For example, chapter 700 was revised to clarify Request for Continued Examination (RCE), interview, suspension of action practices, amendment practice under 37 C.F.R. § 1.312, affidavit and declaration practice under 35 C.F.R. § 132, and submission of other evidence traversing rejections.

Minor updates were also made to the Foreword, Introduction, Subject Matter Index, Appendix II, Appendix L, Appendix R, Appendix AI, and Appendix T. These changes largely relate to inclusion of the rules, laws, and cases current as of July 2022.

Recent Director Review Decisions

IPR Involving Fintiv Analysis and Compelling Merits: CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242

CommScope Techs. LLC v. Dali Wireless, Inc., IPR2022-01242, Paper No. 23 (PTAB Feb. 27, 2023)

On February 27, 2023, Director Vidal (Director) sua sponte issued a Decision on Director review of the PTAB's (Board) Institution Decision in IPR2022-01242. The Director focused on two points from her Fintiv Guidance Memo: analysis for discretionary denial under Fintiv and the compelling merits standard.

The Director noted that the compelling merits standard is a higher standard than the standard for institution set by statute. Citing OpenSky Indus., LLC v. VLSI Tech. LLC, IPR2021-01064, Paper 102, 49-50 (PTAB Oct. 4, 2022) (precedential), the Director stated that a compelling merits challenge can only "plainly lead to a conclusion that one or more claims are unpatentable" if it is highly likely that the petitioner would prevail with respect to at least one challenged claim. The intention of a higher standard to overcome considerations that would lead to discretionary denial is to strike a balance among avoiding potentially conflicting outcomes, avoiding wasteful parallel proceedings, protecting against patent owner harassment, and strengthening the patent system by allowing the review of patents challenged with a sufficiently strong initial merits showing of unpatentability.

In addition, the Director stated that PTAB panels should consider compelling merits only if they first determine that Fintiv factors 1-5 favor a discretionary denial. If the Board determines that the other Fintiv factors 1-5 do not favor discretionary denial, the Board shall decline to discretionarily deny under Fintiv without reaching the compelling merits analysis. Where the Board's analysis of Fintiv factors 1-5 favors denial of institution, the Board shall then assess compelling merits and provide sufficient reasoning to the parties to allow for challenges to the finding and review of that determination.

In this case, the Director found that there was insufficient reasoning regarding compelling merits in the panel's decision, and remanded the proceeding to the Board to revisit its Fintiv analysis pursuant to the provided steps: the Board should first assess Fintiv factors 1-5; if that analysis supports discretionary denial, the Board should engage the compelling merits question. If the Board reaches the compelling merits analysis and finds compelling merits, it shall provide reasoning to explain its determination.

The Director ordered the PTAB to make its remand determination within three weeks, and on March 17, 2023, the PTAB did so, finding that Fintiv factors 1-5 favored denial of institution but that the petitioner had presented a compelling, meritorious challenge.

IPR Involving Fintiv Analysis Where Co-pending Proceeding Invalidated the Underlying Patent Under § 101: AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530

AviaGames, Inc. v. Skillz Platform, Inc., IPR2022-00530, Paper No. 14 (PTAB Mar. 2, 2023)

On August 26, 2022, the Director sua sponte initiated Director review of IPR2022-00530 after the Board denied institution of inter partes review under 35 U.S.C. § 314(a). In its determination to exercise discretion to deny institution, the Board considered the Fintiv factors and reasoned that "because a district court determined that the challenged claims were invalid under § 101, 'the interests of efficiency and integrity of the system would be best served by invoking 35 U.S.C. § 314(a) to deny institution.'"

On March 2, 2023 the Director vacated the Board's decision and remanded the proceeding to the Board to determine whether the record before the Board prior to institution "presents a compelling, meritorious challenge." The Director explained that the district court judgment under § 101 was based on a ground that could not have been raised in an IPR. Therefore, according to the Director, the Board should not deny institution in view of this judgment if the record prior to institution meets the compelling merits standard. The Director also stressed that "the compelling merits standard is a higher standard than the standard for institution set by statute," and "it is only a finding under this higher standard that would compel the Board to review claims for the public benefit when other considerations favor discretionary denial."

The Board was ordered to make a determination within four weeks, and on March 22, 2023, the Board did so, finding that the petition did not present a compelling, meritorious challenge and again denying institution.

IPR Involving Multiple Dependent Claiming: Nested Bean, Inc. v. Big Beings Pty. Ltd., IPR2020-01234

Nested Bean, Inc. v. Big Beings Pty Ltd., IPR2020-01234, Paper 42 (PTAB Feb. 24, 2023)

On June 17, 2022, the Director ordered review of the Final Written Decision in IPR2020-01234. The Nested Bean IPR involves a multiple dependent claiming issue. Specifically, the PTAB's Final Written Decision found unpatentable several dependent claims that depend from "claim 1 or 2." Notably, the PTAB's Final Written Decision found claim 2 unpatentable, but did not find claim 1 unpatentable. The Director found review appropriate to address whether the PTAB legally erred when it found the dependent claims unpatentable if either version of the dependent claims (the version depending from claim 1 or the version depending from claim 2) is described by the prior art. Because the IPR presented a unique legal issue, the Director authorized additional briefing. Patent Owner argued 35 U.S.C. § 112(5) requires the Board to separately consider the patentability of alternative dependencies of a multiple dependent claim. Petitioner argued that if the Board finds any version of a multiple dependent claim unpatentable over the prior art, then the Board should find all versions of a multiple dependent claim unpatentable.

On February 24, 2023, the Director adopted Patent Owner's interpretation of 35 U.S.C. § 112(5) to "require that the Board consider separately the limitations of each claim incorporated by reference into the multiple dependent claim." Moreover, the Director found the Board had erred in its analysis of multiple dependent claims 3-16 by failing to separately consider whether those claims were patentable by their dependency upon patentable claim 1.

The Director modified the Final Written Decision accordingly.

PGR Involving Enablement: Boehringer Ingelheim Animal Health USA Inc. v. Kansas State University Research Foundation, PGR2022-00021

Boehringer Ingelheim Animal Health USA Inc. v. Kansas State University Research Foundation, PGR2022- 00021, Paper 11 (PTAB Feb. 24, 2023)

On August 12, 2022, the Director sua sponte initiated review of the PTAB's Institution Decision in PGR2022- 00021. The Boehringer PGR raises written description, enablement, and obviousness challenges. Regarding the written description and enablement challenges, the PTAB held under the Advanced Bionics framework that the asserted arguments were substantially the same as those previously presented to the Office and Petitioner failed to demonstrate that the Office erred. The Director found review to be appropriate, but did not identify the specific issues for Director Review.

On February 24, 2023, the Director vacated and remanded the proceeding to the Board to provide its rationale regarding "whether § 325(d) applies to . . . (enablement) based upon the written description arguments presented during original prosecution." The Director specifically held that, in exercising discretion under 35 U.S.C. § 325(d), to the extent the Board found that Petitioner's enablement challenge constituted the same or substantially the same arguments previously presented to the Office on written description, "the Board must set forth its rationale in sufficient detail to inform the parties and the public and allow for review." Moreover, the Director stressed that while written description and enablement often rise and fall together, the written description and enablement requirements involve different considerations, such that an argument made regarding one requirement does not necessarily equate to an argument made regarding the other.

The Board was ordered to make a determination within one month, and on March 22, 2023, the Board did so, exercising § 325(d) discretion as to the written description ground and finding the enablement and obviousness grounds did not meet the institution standard on the merits.

Federal Circuit Precedential Decision: Sets Bar for 'Motivation-to-Combine' Challenges — Motivation To Combine Only Requires Showing That the Prior Art Addressed the Issue, Not That It Improved on the Issue

In Intel Corporation v. Pact XPP Schweiz AG, No. 22-1037 (Fed. Cir. March 13, 2023), the U.S. Court of Appeals for the Federal Circuit reversed and remanded the Board's finding that Intel failed to show that the challenged claim of PACT's patent was unpatentable as obvious in light of two prior art references and concluded that "if there's a known technique to address a known problem using 'prior art elements according to their established functions,' then there is a motivation to combine."

Before the Board, Intel had asserted that a person of ordinary skill in the art would have been motivated to combine the two prior art references — Kabemoto and Bauman — because they related to the same field and addressed the same problem. Intel then reasoned that a person of ordinary skill in the art would have used Bauman's technique to address the same problem in Kabemoto. The Board rejected Intel's known technique argument concluding that if Kabemoto already addressed the known problem through the use of the known technique similar to that of Bauman's, then a person of ordinary skill in the art would not regard Bauman's technique as an obvious improvement to Kabemoto's.

On appeal, the Federal Circuit found that there was motivation to combine and that because "Kabemoto and Bauman address the same problem and that Bauman's cache was a known way to address that problem is precisely the reason that there's a motivation to combine under KSR and our precedent." The Federal Circuit concluded that it was "enough for Intel to show that there was a known problem []in the art, that Bauman's [technique] helped address that issue, and that combining the teachings of Kabemoto and Bauman wasn't beyond the skill of an ordinary artisan. Nothing more is required to show a motivation to combine under KSR."

Events and Speaking Engagements

Highlights From Recent 2023 PTAB Bar Association Annual Conference (held March 8-10, 2023)

Upcoming Events and Speaking Engagements

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.