Petitioners should beware gaps in their evidence and reasoning. Two DepoMed patents recently survived their second IPR challenge because the petitioner failed to meet its burden of proof. The PTAB rejected petitioner’s obviousness arguments as “overly vague and nonspecific,” concluding that petitioner failed to “explain persuasively why or how a person of ordinary skill in the art would modify the drug formulation” of the prior art to develop the claimed formulation, and failed to show a reasonable expectation of success.
Continue Reading Mind The Gap: The PTAB Will Not Bridge It For You
PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard
Score another win for pharma against investment funds-turned-IPR petitioners. On September 21, 2015, the PTAB denied institution of Ferrum Ferro Capital, LLC’s (“FFC”) petition for IPR of an Allergan patent claim related to its Combigan® eye-drop product for treating glaucoma. This dispute has attracted publicity for having bled into the courts, where Allergan has sued FFC for extortion, unfair competition, and malicious prosecution. The PTAB’s non-appealable denial of FFC’s petition is obviously a significant victory for Allergan, and follows the PTAB’s recent denials of two IPR petitions filed by the Coalition For Affordable Drugs.
Continue Reading PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard
Federal Circuit Affirms Seven CBM Decisions
In a non-precedential decision issued on August 24, 2015, the Federal Circuit affirmed the final decisions of the PTAB in seven overlapping covered business method patent reviews. In those reviews, Liberty Mutual Insurance Company challenged claims in five patents owned by Progressive Casualty Insurance Company, all directed to pricing automobile insurance based on vehicle use or online adjustment of insurance policies. In the Federal Circuit’s decision—its second addressing the merits of a CBM review—the court affirmed the PTAB’s decisions that certain claims were anticipated and others were obvious, and addressed several issues.
Continue Reading Federal Circuit Affirms Seven CBM Decisions
Petitioners Should Heed the PTAB’s Preference for Corroborated Witness Testimony
In its third PGR institution decision, the PTAB provided its first guidance regarding witness testimony to support a showing of prior public use or sale in PGRs. The decision is a cautionary tale that the PTAB strongly prefers corroboration of witness testimony, much like the corroboration required during interference proceedings. This is not a surprise, given that the PTAB and its predecessor also presided over interference proceedings. Thus, uncorroborated witness testimony, alone, will not be sufficient to show prior public use or sale. Netsirv v. Boxbee, Case PGR2015-00009, Paper No. 10 (August 4, 2015).
Continue Reading Petitioners Should Heed the PTAB’s Preference for Corroborated Witness Testimony
Keep Your Distance: The PTAB Limits Direct Communication Between a Party and an Opposing Expert
On July 7, 2015, the Patent Trial and Appeal Board issued an order in Square, Inc. v. Think Computer Corporation, CBM2014-00159, stating that any ex parte communication between a Patent Owner and an opposing expert outside the presence of counsel is “wholly inappropriate.” 
The order arose following an email communication sent from Aaron Greenspan, inventor of U.S. Patent No. 8,396,808 at issue and President/CEO of Think Computer Corporation, directly to Norman Sadeh-Koniecpol, Ph.D., a professor at Carnegie Mellon University and expert for the Petitioner.
Continue Reading Keep Your Distance: The PTAB Limits Direct Communication Between a Party and an Opposing Expert
Patent Dispute Reform Legislation Is Now Pending in Both Houses of Congress
The House of Representative’s Innovation Act, H.R. 9, was voted to the House floor for further consideration on June 11, by a 24-8 vote of its Judiciary Committee, after the Senate’s PATENT Act, S. 1137, was voted to the Senate floor on June 4 by a 16-4 vote of its Judiciary Committee. See prior entry, “PTAB Review Reform in Bill Approved by Senate Committee.” Both bills target abusive litigation tactics and post-grant proceedings, IPRs and PGRs.
Notably, amendments were introduced to H.R. 9 to prevent the types of IPRs filed by Kyle Bass-type hedge funds for monetary gain, and to permit the patent owner to support its preliminary response with new declaration evidence.
Continue Reading Patent Dispute Reform Legislation Is Now Pending in Both Houses of Congress
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 Master Fund. It’s also an example of attacking IPR petitions by seeking discovery of RPIs.
Continue Reading Pharma Patent Owner Attacks Bass IPR Petitions by Requesting Discovery of Real Parties-In-Interest
PTAB Review Reform in Bill Approved by Senate Committee
Late June 2, the Senate Judiciary Committee released a new version of its Protecting American Talent and Entrepreneurship (PATENT) Act, S. 1137. In response to prodding by industry groups, the bill now includes reforms directed at preventing abuse of the Patent Office’s post-grant proceedings, IPRs and PGRs, against patent owners The bill is here.
Continue Reading PTAB Review Reform in Bill Approved by Senate Committee
Claims Found Obvious Even Though Petitioner Waited Until Reply to Present Expert Testimony
It’s well understood that waiting until reply to present any expert testimony comes with a risk that the testimony will be excluded. But that’s not what happened in a recent IPR, where a petitioner waited until reply to present such testimony, and the PTAB, in view of the straightforward nature of the technology, found the challenged claims obvious.
Continue Reading Claims Found Obvious Even Though Petitioner Waited Until Reply to Present Expert Testimony