Subscribe to all posts by Eric M. Brusca, Ph.D.

Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPR

On June 7, 2017, the PTAB issued a final written decision in IPR 2016-00254 canceling claims in a Fresenius Kabi USA, LLC (Fresenius) patent covering Diprivan®. The PTAB instituted the IPR in response to a petition filed by hedge fund manager Kyle Bass and his colleague Erich Spangenberg. Diprivan® is the commercial name for propofol, … Continue Reading

One-Year Time Bar Does Not Apply to a Request for Joinder of IPR Proceedings

Teva Pharmaceuticals USA, Inc. (“Teva”) filed a Petition, seeking an IPR of claims 1–20 of Allergan’s U.S. Patent No. 8,642,556. [IPR2017-00579, Paper No. 9]  Along with the Petition, Teva filed a Motion for Joinder to join Mylan Pharmaceuticals Inc. v. Allergan, Inc., IPR2016-01129.  This blog has previously reported on the topic of joinder in IPR … Continue Reading

Coalition for Affordable Drugs Fails to Knock Out Biogen’s Tecfidera® Patent

On March 21, 2017, the PTAB refused to cancel claims of a Biogen MA Inc. (Biogen) patent covering multiple sclerosis drug Tecfidera® during IPR2015-01993, which was instituted in response to a petition filed by the Coalition for Affordable Drugs V LLC (CFAD), a group started by hedge fund manager Kyle Bass. Biogen’s U.S. Pat. No. … Continue Reading

Your Supplemental Evidence is Timely, but is it Relevant to a Claim at Issue? PTAB Will Decide.

Once a trial has been instituted at the PTAB, a party seeking consideration of supplemental evidence may file a motion in accordance with the following requirements: (1) the request for the authorization to file a motion to submit supplemental information must be made within one month of the date the trial was instituted; and (2) … Continue Reading

Federal Circuit to PTAB (Again) – Explain Yourself!!

The Federal Circuit has once again vacated and remanded a PTAB final written decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious.  In In re Nuvasive, Appeal No. 15-1670 (Fed. Cir. Dec. 7, 2016), the Federal Circuit reviewed the PTAB’s final written decision in IPR2013-00506 … Continue Reading

Prior Art Made Available at Members Only Gatherings May Not Satisfy “Publically Accessible” Requirement

Two recent PTAB decisions highlight important developments in qualifying a publication as a reference, available as prior art.  In one case, the PTAB concluded that a printed catalog did not qualify as a printed publication prior art because it was distributed only at a private tradeshow to persons not necessarily skilled in the art.  In … Continue Reading

IPR Institution Denied Because Petitioner Used Hindsight Bias to Formulate Arguments

On August 23, 2016, the PTAB denied Mylan Laboratories Limited’s (Mylan) petition for IPR (IPR2016-00627) against a patent owned by Aventis Pharma S.A. (Aventis). In doing so, the PTAB offered guidance regarding what is required to successfully make out a claim of obviousness regarding a new chemical compound. In particular, the PTAB’s decision offers insight … Continue Reading

Been There, Done That: Petitioners Should Find Art and Arguments Not Previously Considered During Prosecution

This blog has previously explained on July 23, 2015, December 10, 2015, and December 16, 2015 why it is important for parties to AIA trials to carefully consider the patent prosecution history.  Under 35 U.S.C. § 325(d), the Board has discretion to deny an AIA trial if “the same or substantially the same prior art or … 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

It’s Complicated: PTAB Reinforces Notion That Petitioners Should Consider Expert Testimony in Complex Technology Areas

This Blog previously highlighted the risks involved when a petitioner does not submit an expert declaration with their petition.  This risk may be lessened where the “the invention and prior art references are directed to relatively straightforward and easily understandable technology.” [Paper No. 41 at 17 n.6 of IPR2014-00169] (ruling in favor of petitioner despite … Continue Reading

PTAB Reminds Petitioners That Conclusions in Expert Declarations Must be Supported by Explanations

On January 19, 2016, the PTAB denied Coalition for Affordable Drugs V LLC’s (CFAD) request for rehearing following the Board’s decision denying institution of IPR.  In IPR2015-01086, CFAD filed a petition requesting an IPR of claims 1–13 in Biogen International GmbH’s (Biogen) U.S. Patent No. 8,759,393.  The Board denied the petition and CFAD filed a … Continue Reading

Federal Circuit: Patent Owners Must Consider Prior Art from Prosecution History in Motion to Amend

Update: Overruled in part by Aqua Products, Inc. v. Matal.  In a subsequent order, the court vacated the portions of the panel’s and the PTAB’s decisions concerning the patent owner’s motion to amend, and remanded the case to the PTAB for proceedings consistent with the Aqua Products decision. In December 4, 2015, the Federal Circuit … Continue Reading

Split PTAB Ruling Allows Parties to Join Their Own Petitions

An expanded, split panel of the PTAB recently decided that it may be appropriate to join the same party’s serially-filed IPR petitions into a single proceeding, even when one such petition would otherwise be time-barred but for the joinder.  Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (PTAB Oct. 5, … 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

Claim Charts Are Not Enough – Petitioners Must Clearly Explain Relevant Disclosures in Prior Art

Failure to provide a detailed explanation of the relevance of prior art disclosures may foreclose any possibility of institution of IPR.  A petition for IPR must align the evidence and arguments with the various limitations of the challenged claims. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] … 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
LexBlog