Real Party-in-Interest

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Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

Guidance on Requesting Motions for Sanctions

On November 10, 2016, the Intellectual Property Owners Association (IPO) hosted a panel discussion entitled Ethics in AIA Post-Grant Proceedings at the PTAB with the Honorable Thomas Giannetti, Lead Administrative Patent Judge of the PTAB. The main topic of the discussion was guidance on motions for sanctions.  The rules relating to trial practice before the … Continue Reading

PTAB’s Reconsideration of Institution Decision Unreviewable on Appeal

In denying a petition for rehearing, the Federal Circuit determined in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc. that under Cuozzo, the court lacks authority to review a PTAB decision that reconsidered an IPR institution decision, and then terminated the IPR because the petition failed to identify the real party in interest. As we have … Continue Reading

Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

An updated discussion of this issue is available here: Federal Circuit to Take AIA Time Bar Issue En Banc The Federal Circuit has again concluded it may not review the PTAB’s institution of inter partes review (IPR) over a patent owner’s objections that the IPR petition is time barred. Wi-Fi One, LLC v. Broadcom Corp., … Continue Reading

The Personal Touch: PTAB Grants Bass and Spangenberg IPR Petition

On May 20, 2016, the PTAB granted Kyle Bass and Erich Spangenberg’s petition for IPR (IPR2016-00245) against a patent owned by Alpex Pharma SA (Alpex).  The petition sought cancellation of claims 1-9 of U.S. Patent No. 8,440,170, asserting that the claims were obvious in view of numerous references.  The claims of the ‘170 patent are generally … Continue Reading

PTAB Provides Procedural Guidance with Five Precedential Opinions

The Patent Trial and Appeal Board recently designated five opinions as “precedential.” Each of these opinions addresses procedural aspects of AIA proceedings, including requests for additional discovery, the one-year time period for filing a petition, amending claims, and requirements for PTAB consideration of a petition. A summary of each opinion follows.… Continue Reading

PTAB Requests Further Briefing on Petition for Sanctions Against Hedge Fund Coalition

The PTAB recently revisited Patent Owners’ requests to file motions for sanctions against the Petitioner, Coalition for Affordable Drugs (“CFAD”).  The CFAD was started in conjunction with hedge fund manager Kyle Bass, who has been accused of filing IPRs in order to manipulate company stock price for his hedge fund’s monetary gain.  Recently, in Coalition … Continue Reading

PTAB Denies Institution of Two IPR Petitions Filed by Hedge Fund

As the patent community anxiously awaits the PTAB’s decision concerning whether the Coalition For Affordable Drugs (CFAD) should be sanctioned for filing an IPR petition against a Celgene patent¹, the PTAB recently denied institution of two IPR petitions² the CFAD filed concerning two Acorda patents that cover Ampyra, a billion-dollar drug for treating multiple sclerosis.  The … Continue Reading

Pharma Patent Owner Attacks Bass IPR Petitions by Requesting Discovery of Real Parties-In-Interest

A picture can be worth a thousand words. This one illustrates the complex web of actual and potential real parties-in-interest (RPIs) that a pharmaceutical patent owner is attempting to pierce for two IPR petitions recently filed by Coalition For Affordable Drugs II—one of several similarly-named creations of hedge-fund manager Kyle Bass and his Hayman Credes … Continue Reading

Is the Coalition for Affordable Drugs Abusing the IPR Process?

The PTAB granted leave on June 9 for the patent owner, Celgene Corporation, to file a motion for sanctions seeking dismissal in several IPRs¹ filed by the Coalition for Affordable Drugs. The Coalition for Affordable Drugs, an organization created by the hedge fund Hayman Credes Master Fund L.P., has filed multiple IPRs against pharmaceutical companies with … Continue Reading

Real Party-In-Interest Not Necessarily Established by Co-Defendants in Litigation

Whether a non-identified party is a real party-in-interest to a proceeding is a highly fact-dependent question. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)).  “A common consideration is whether the non-party exercised or could have exercised control over a … Continue Reading

Real Party in Interest – A Strategy For Attacking IPR Petitions.

Recent statistics suggest that approximately two thirds of claims challenged in IPR proceedings are held to be invalid by the PTAB.  For PTAB trials instituted on petitions filed in Art Unit 1600 at the U.S. Patent and Trademark Office, which examines patent applications in the biotechnology and pharmaceutical arts, 100% of the final decisions rendered … Continue Reading
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