Source: Grill IP patents news
More wind turbines than cows seem to be gracing the European countryside these days; the role of nuclear power plants in the American energy mix is growing again; and across Asia car ownership is increasing rapidly; no wonder that the energy sector is experiencing innovation at an unprecedented rate. A key technology here are catalysts, as new techniques make it easier for engineers to test materials for and the manufacturing of catalysts, which is crucial to ensure that fuel, and the processes to extract fuel, are cleaner and safer. The rapid rate of innovation in the energy sector also drives a rise in patent applications. Patenting activity in the energy sector has risen over the past decade, particularly for technology for fluid catalytic cracking — a process that creates high-octane gasoline from crude oil. The popularity and intricacy of this patent market means that energy companies are finding it increasingly difficult to protect their innovation. Existing patents are susceptible to challenges from competitors, although recent changes to US patent law have tried to ensure that court proceedings are more efficient and less costly.
Petition processing: an alternate route
The America Invests Act (AIA) of 2011 initiated an inter partes patent review procedure. It is a mechanism for removing competing patents and is overseen by the Patent Trial Appeal Board (PTAB), which acts as the forum for patent challengers. The board offer a less costly alternative to filing a case with a district court, which usually is a long and drawn-out process. Prior PTAB decisions and the statutory framework of the AIA allows us to see both the challenges and the opportunities of this review process – for patent owners and petitioners alike.
Going to the PTAB makes it undeniably easier for petitioners, although they still face a few complications. Challengers are obliged to label the real-party-in-interest, which exposes any competitive business position or concentration in a new catalyst technology they may possess. While the review process is cheaper than traditional litigation, filing fees can quickly add up, since each challenge must be submitted individually.
However, the benefits for petitioners greatly outweigh those of their competitors. The PTAB’s standard has been to give challenged claims the broadest interpretation possible, making these claims simpler to critique. Plus, no time limits exist for the filing of an inter partes review, giving petitioners the opportunity to develop a thorough position through the use of expert testimony and detailed study. This testimony has been crucial for decisions impacting the energy sector, where the evolution of complex catalyst technologies must be understood by the PTAB.
Butamax Advanced Biofuels LLC v Gevo, Inc. demonstrates the Board’s inclination to credit unrebutted expert testimony over attorney argument on behalf of patent owners. The PTAB determined that claims involving renewable jet fuel technologies were unpatentable, crediting the challenger’s expert evidence in their Final Written Decision, despite the expert failing to support their opinion with any official data.
This suggests that the PTAB may give too much weight to such testimony, unfairly deliberating the petitioner’s position over that of the patent owner. However, the review process has been amended to allow expert testimony on behalf of owners at the preliminary stage of review. Owners may also rely on public testimony and previously filed reports in their response, providing a counterweight to “unexpected results” contentions by petitioners. For instance, in Omron Oilfield & Marine Inc. v MD/TOTCO, the Board declined a petition due to former district-court testimony that focused on commercial success.
While these additions to the inter partes review make life easier for patent owners during the rebuttal process, but if they want to prevent a review they still face immense challenges. Stopping a petition from being filed is difficult, and once a petition is levied, patent holders have roughly three months to submit a full response. This time frame makes it harder to prepare expert declarations and evidence to support patent claims, weakening the refutation of any legal challenge to a company’s catalyst technology.
Some amendments are in order
While patent owners have faced challenges of time and testimony to defending their claims, the PTAB has begun granting motions to amend, especially in the energy sector. In REG Synthetic Fuels LLC v. Neste Oil OYJ, the Board allowed an amendment to Neste Oil Oyj’s patent on renewable fuel, enabling Neste to substitute four of its claims. Here, inter partes review affords patent owners the flexibility to alter claims to avoid losing legal protection in the face of an ever evolving field of catalyst technology.
As energy technologies evolve, new procedures to deal with patentability claims between companies bent on spearheading that evolution are in order. The inter partes review process developed by the AIA serves as a faster and cheaper alternative to lengthy district court disputes, but welcome resolutions to catalyst technology claims will entail strategic preparation by petitioners and patent owners alike.Tags: America Invests Act, catalyst technology, dispute resolution, energy sector, inter partes review, Patent News, Patent Trial Appeal Board, renewable energy, US patent news, USA legal IP