In a recent decision appealing the PTAB’s finding of claims unpatentable in two different, but related re-examination proceedings, the Federal Circuit vacated and remanded the Board’s decisions based on reinterpretation of claim terms construed under the PTAB’s broadest reasonable interpretation (BRI) standard during the re-examination process (In re Varma, Appeal 2015-1502 and 2015-1667, Fed. Circ., March 10, 2016). This decision is one of several recent decisions in which the Federal Circuit has taken the opportunity to reinterpret the PTAB’s broadest “reasonable” interpretation of the claims during a post grant proceeding and change the interpretation to be more “reasonable” in light of the specification and actual claim language.
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Cross-Pollination of Information From Litigation to IPR Can Lead to Trouble for Parties
In a recent order by the magistrate judge in Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC (NJD, Jan. 22, 2016), defendants Amneal Pharmaceuticals and Par Pharmaceuticals were reprimanded and threatened with sanctions and monetary fines for trying to use confidential information from the litigation to move for additional discovery in a related IPR proceedings. The judge ruled this behavior violated a Discovery Confidentiality Order (DCO) in place in the litigation.
Continue Reading Cross-Pollination of Information From Litigation to IPR Can Lead to Trouble for Parties
Evidence From Prosecution and District Courts Not Excluded
Two recent PTAB final written decisions illustrate the difficulty in convincing the PTAB to grant a motion to exclude evidence, in particular on the grounds of relevance, more particularly for evidence submitted in support of a party’s claim construction position.
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Coalition for Affordable Drugs PTAB Scorecard
In the ongoing saga of the Coalition for Affordable Drugs (CFAD) vs. the pharmaceutical industry, there has been quite a bit of movement recently by the PTAB on institution of many of CFAD’s earliest-filed IPR petitions. To date, CFAD has filed 33 petitions for IPR, some of them multiple petitions against the same patent, and there have been 17 institution decisions by the PTAB. So, how does CFAD seem to be faring: are they having more or less success than any other petitioner?
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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 for Affordable Drugs v Celgene Corp. (IPR2015-01169), the PTAB authorized Celgene to file a Petition for Abuse of Process against CFAD.
Continue Reading PTAB Requests Further Briefing on Petition for Sanctions Against Hedge Fund Coalition
Does Frequent Denial Of Motions To Exclude Evidence In IPRs Encourage Evidence Dumping?
Exclusion of evidence before the Patent Trial and Appeal Board in an Inter Partes Review is governed by the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, (Aug. 14, 2012), which states that a motion to exclude “must explain why the evidence is not admissible (e.g., relevance or hearsay) but may not be used to challenge the sufficiency of the evidence to prove a particular fact.” Id at 48767. 
This provides little guidance to the party trying to exclude evidence in an IPR, and the frequent denial of Motions to Exclude in IPRs seems to encourage parties to include any and all possible evidence, even some that might not be admissible, and simply rely on the Board to consider the proper weight to give it.
Continue Reading Does Frequent Denial Of Motions To Exclude Evidence In IPRs Encourage Evidence Dumping?
Evidence of Denial of IPR Institution Allowed in District Court Infringement Action
On June 19, 2015 the District Court for the Middle District of Florida denied Defendants’ motion in limine requesting the exclusion of evidence relating to a denial of an IPR institution from the Patent Trial and Appeal Board (Stoneeagle Services, Inc. v. Pay-Plus Solutions, Inc. et al, 8-13-cv-02240 (FL MD)). This decision contradicts recent decisions in other jurisdictions in which the results of IPR decisions have not been allowed in District Court actions (see Interdigital Commc’ns, Inc. v. Nokia Corp., No. 13-10-RGA,2014 WL 8104167 (D. Del. Sept. 19, 2014) and Ultratec, Inc. et al. v. Sorenson Communications, Inc., No. 3:13-CV-00346 (W.D. Wisc. Oct. 8, 2014 ).
Continue Reading Evidence of Denial of IPR Institution Allowed in District Court Infringement Action
PTAB Allows Motion to Amend After it Rejects Original Patent Claims Directed to BioDiesel Fuel
On June 5, 2015, the Board issued a final written decision in Reg Synthetic Fuels Llc, V.Neste Oil Oyj, IPR2014-00192, rejecting all challenged claims of U.S. Patent No. 8,278,492, but confirming the patentability of substitute claims submitted by Patent Owner.
The ‘492 patent is directed to a process for the manufacture of biodiesel fuel comprised of hydrocarbons from bio oils and fats. The ’492 patent discloses a two-step process in which a feed stream of biological origin, diluted with a hydrocarbon, is first hydrodeoxygenated, and then isomerized. According to the ’492 patent, deoxygenation via hydrogenolysis requires a large amount of hydrogen, and releases a significant amount of heat that must be dissipated. To avoid these problems, the patented process “spikes” the feed stream with sulfur to favor the decarboxylation/decarbonylation reaction pathways.Continue Reading PTAB Allows Motion to Amend After it Rejects Original Patent Claims Directed to BioDiesel Fuel