Patent Owners Starting to Get the Last Word at the PTAB
Patent Owner Sur-Replies on the Uptick
Back in June of 2016, the Federal Circuit issued its opinion in Genzyme Therapeutic Products LP v. BioMarin Pharmaceutical Inc.(here). At the time I explained that Genzyme was a game-changer. This was because it made clear that the trial portion of an AIA proceeding was an opportunity for both sides to build a record — not a mere analysis of the four corners of the trial petition. As stated simply by the Court in Genzyme, "[t]he purpose of the trial in an inter partes review proceeding is to give the parties an opportunity to build a record by introducing evidence—not simply to weigh evidence of which the Board is already aware." (emphasis added)
As a reminder, an instituted AIA trial (absent a motion to amend) includes a single brief from each party, the petitioner filing the last brief as the party bearing the burden of demonstrating unpatentability.
Since Genzyme, the Board has become far more comfortable with petitioners citing to new exhibits in petitioner replies (assuming such exhibits/arguments are in support of existing positions as opposed to altogether new theories). At roughly the same time Genzyme issued, and since, the Board has been faulted for violating the Administrative Procedure Act (APA). For example, for failing to give parties a fair opportunity to respond to issues. (e.g., SAS Institute Inc., v. ComplementSoft LLC) These developments are helping drive a more liberal perspective at the Board as to additional briefing possibilities for Patent Owners.
A review of trial practices immediately before Genzyme, as compared to today, illustrates an increased willingness on the part of the PTAB to permit Patent Owner sur-replies at the close of the trial, effectively giving Patent Owners the last word in trial briefing.
As shown in the graph below (using the Spring of '16 (pre-Genzyme) and '17 as sample windows) Patent Owners are seeing an uptick in sur-replies. While this uptick may appear modest at first blush, there were 35 fewer cases available in the 2017 sample.
(While the charts above show cases (red) in which a formal order was issued denying a sur-reply request, as panels routinely issue such decisions via email, this aspect of the chart is unreliable)
Where sur-replies are granted, it is routinely for one of two scenarios: (1) The patentee bears the burden on an issue, such as antedating; or (2) The sur-reply is sought to address alleged new arguments/exhibits of the Petitioner Reply, as shown in the chart below.
Going forward this trend will is likely to continue. For this reason, some formal guidance from the Board would appear in order to clarify when a Patent Owner may be entitled to a sur-reply as a matter of right (i.e., for matters in which the Patent Owner carries the burden). Such guidance would quell unnecessary disputes, and reduce the need to request panel attention to referee the same.
As to new argument/evidence issues, it is uncommon for a petitioner reply not to have at least one new exhibit. ("new" meaning not appearing in the trial petition). Given the increasing willingness of the Board to grant sur-replies on this basis, care must be given to ensure that this argument does not become an avenue for abuse.
Patent Owner's raising affirmative defenses, or AIA statutory issues (perhaps of increasing importance after WiFi One) would be wise to consider sur-reply options going forward. Indeed, the Federal Circuit will often point out that the failure to seek such relief may foreclose otherwise viable arguments on appeal.
Scott A. McKeown is an author of the Patents Post Grant.