Litigation Trends 2024

72 | Weil, Gotshal & Manges LLP LITIGATION TRENDS 2024 | 73 T O C E M P A N T I I P C A P R O W C C O N T A C T I N T A P P P A T C C L S E C Appeal Board (“PTAB”) in several contexts. Among the most significant was the Supreme Court’s decision in Cuozzo Speed Techs. v. Lee, 579 U.S. 261 (2018), where the Court upheld the PTAB’s broadest reasonable interpretation claim construction standard for post-grant proceedings under the America Invents Act (“AIA”). Although later rendered moot by the adoption of the Phillips standard for claim construction, the Court’s Cuozzo decision demonstrated the deference applied to the agency where the AIA did not provide a standard and the USPTO’s chosen standard was a “reasonable exercise of the rulemaking authority that Congress delegated.” Id. at 280. Other areas where the Federal Circuit has deferred to the USPTO include the PTAB’s rules governing motions to amend and rules governing inter partes review institution and final written decisions. More recently, the Federal Circuit evaluated the deference owed to the USPTO’s Precedential Opinion Panel (“POP”), since replaced by Director Review, and its opinions in the case of Facebook v. Windy City. 973 F.3d 1321 (Fed. Cir. 2020). The POP designated certain PTAB opinions as precedential or informative, significantly influencing the impact that a decision will have on PTAB practice. Precedential opinions establish the procedure and law to apply on a variety of PTAB issues, including claim construction, patent eligibility, anticipation and obviousness standards, specification and claim requirements, and the standard for institution and discretionary denial of petitions under Sections 314(a) and 325(d). The government filed an amicus brief supporting Facebook and arguing for the application of Chevron Deference to the POP. Despite the government’s brief, the Federal Circuit determined that there “is no indication in the statute that Congress [] intended to delegate broad substantive rulemaking authority to the Director to interpret statutory provisions through POP opinions.” Id. at 1350. Because it is not authorized by statute, substantive rulemaking by the USPTO will not be directly implicated by a decision Patent Litigation overruling Chevron. Thus, the precise degree of deference owed to the Director will be thrown into question in cases where there is any question whether rulemaking is substantive. Firmer Answers from the Federal Circuit on Estoppel from Patent Trial and Appeal Board Proceedings The America Invents Act (“AIA”) includes estoppel provisions that can be triggered by petitions challenging a patent in an inter partes review (“IPR”) or post-grant review (“PGR”). If those proceedings result in a final written decision, the petitioner may be barred due to the estoppel from later asserting a defense in either district court or before the International Trade Commission (“ITC”) that it raised or reasonably could have raised during the IPR or PGR. 35 U.S.C. §§ 315(e)(2), 325(e)(2). Defining what grounds a petitioner “reasonably could have raised” turns out to be a hotly debated legal issue worth closely monitoring. The scope of a potential estoppel must therefore be a consideration for any party considering challenging a patent at the Patent Trial and Appeal Board (“PTAB”). The exact scope and contours of the estoppel, however, were not legislatively well defined in the AIA. To understand the scope of the estoppel, one must first appreciate the basic difference in scope between an IPR and a PGR. IPR allows prior art challenges under § 102 (anticipation) or § 103 (obviousness) on the basis of patents or printed publications. § 311(b). PGR is not so limited; PGR also allows challenges under § 101 (patent eligibility) and § 112 (lack of written description, non-enablement, and indefiniteness), and prior art challenges under § 102 and § 103 are not limited to patents and printed publications, but can also be grounded on public use, on-sale activity, or other public disclosure. The more different invalidity theories that can be raised in a proceeding, the broader the potential estoppel. The Federal Circuit has addressed the estoppel issue more than once. Initially, the Federal Circuit in Shaw Industries Group, Inc. v. Automated P A T

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