Photo of Sandip H. Patel

Sandip H. Patel has more than 20 years of experience in representing clients in inter partes matters before the Patent Office, including interferences, reexaminations, and AIA trials. He has a formal education in chemical engineering, but his work in these matters has spanned the entire spectrum of engineering and sciences, including biotechnology, chemistry/chemical engineering, mechanical engineering, and electrical engineering. Read full bio here.

Hands up STOP - Estoppel Evolves

Back in 2016, the Federal Circuit held that a petitioner retains the ability, after an adverse Patent Trial and Appeal Board decision, to assert un-instituted invalidity grounds it presented in its petition. The court reasoned that when the Board chooses not to institute certain petitioned grounds (e.g., due to redundancy), the petitioner could not have raised those grounds during the AIA trial and, therefore, cannot be estopped from pursuing those attacks in later litigation. Shaw Indus. Grp. v. Automated Creel Sys., 817 F.3d 1293, 1300 (Fed. Cir. 2016).
Continue Reading Estoppel Evolves

In Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., Appeals 2020-2073, -2142 (Fed. Cir. Nov. 24, 2021), the Federal Circuit affirmed a Patent Trial and Appeal Board’s final decision canceling claims in Indivior’s patent claiming a polymer matrix-containing film. Certain claims in the patent recited an amount of polymer matrix inadequately disclosed, according to the Board, in a predecessor application to which the patent claimed priority. As a result, the claims’ effective filing date was so late that prior art published between the patent’s actual filing date and its earliest claimed priority date rendered the claims unpatentable. Here the prior art was none other than the Patent Office’s publication of one of the claimed priority applications.
Continue Reading So, You Invented a Numerical Range

Duck horse - Bizarre Facts Beget Bizarre Result

Before the Federal Circuit’s recent decision in In re Vivint, Inc., Appeal 2020-1992 (Fed. Cir. Sept. 29, 2021), the Patent Trial and Appeal Board affirmed a reexamination examiner’s final rejection of Vivint’s patent claims as unpatentable over prior art. In due course, the Patent Office would have issued a certificate canceling those claims. But Vivint appealed the Board’s decision, not because the examiner’s/Board’s decisions were substantively incorrect, but because the Office should not have ordered reexamination. The AIA’s revisions to the Patent Act give the Board discretion to deny inter parties review and deny requests for ex parte reexamination that present “the same or substantially the same prior art or arguments previously … presented to the Office.”
Continue Reading Bizarre Facts Beget Bizarre Result

Headaches in Claiming Antibody-based Inventions Broadly

Recent Federal Circuit decisions call into question the value of patents broadly claiming inventions on antibodies and their function in treating debilitating diseases. The decisions in these cases originated in district courts and arguably swept aside the merits of scientific breakthroughs because the inventions claimed were not enabled or were otherwise insufficiently described to justify their broad breadth.* In Teva Pharmaceuticals Int’l GmbH v. Eli Lilly and Company, Appeals 2020-1747, -1748, and -1750 (Fed. Cir. Aug. 16, 2021), the Federal Circuit again dealt with patents broadly claiming antibodies.
Continue Reading The Headaches in Claiming Antibody-based Inventions Broadly

The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions

On June 21, 2021, the Supreme Court issued a decision vacating the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). As we previously explained, the Federal Circuit in Arthrex held that the AIA was unconstitutional in that administrative patent judges (APJs) have the authority of principal officers, but the statute provides for their appointment by the Secretary of Commerce, rather than by the President with the advice and consent of the Senate.
Continue Reading The Supreme Court Decides Arthrex, Giving the PTO Director Discretion to Review PTAB Decisions

The Patent Trial and Appeal Board recently presented an update on the “Fast-Track Appeals Pilot Program” the Patent Office initiated in July 2020. As we previously explained (link), the program is designed to reduce the pendency of ex parte appeals. Under the program, the Board has been issuing decisions within six months from the date the appeal enters the program. That’s a significant reduction in pendency. In its update, the Board presented details of the program’s progress.
Continue Reading The Board Is Deciding Ex Parte Appeals Within One Year

A couple of years ago, in Amerigen Pharmaceuticals Ltd. v. UCB Pharma GmbH, 913 F.3d 1076, 1082 (Fed. Cir. 2019), the Federal Circuit acknowledged its jurisdiction to decide appeals of the Board’s final written decisions in AIA trials, but explained that an appellant (AIA Trial petitioner) must demonstrate it has standing. Quoting from the Supreme Court’s decision in Spokeo, Inc. v. Robins, 136 S. Ct. 1540, 1547 (2016), the court explained the appellant must demonstrate, among other things, that it has “suffered an injury in fact.” Amerigen, 913 F.3d at 1082–83.
Continue Reading The Concrete Injury Necessary for Appellate Standing Is Flexible

A patent interference is an adversarial proceeding where each party is trying deprive its opponent of a patent on an invention that that the Patent Office has already decided is patentable. Long after the AIA became effective to phase out interferences, the Patent Trial and Appeal Board continues to declare and administer them where at least one of the parties has an interfering application or patent predating the AIA’s enactment. The Board declares interferences to avoid the embarrassment and marketplace chaos where the Patent Office issues two patents on the same invention to different parties, and to avoid awarding a patent monopoly to the entity who was not the first to invent.
Continue Reading Mine Your Patent Application and You Might Find a Licensee

The Supreme Court issued an order on October 13, 2020, granting and consolidating three certiorari petitions seeking review of the Federal Circuit’s judgment in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), reh’g denied, 953 F.3d 760 (Fed. Cir. 2020). We discussed the Federal Circuit’s judgment here and its decision denying rehearing here. The Supreme Court, at the government’s recommendation, asks the parties to address the following two questions.
Continue Reading Supreme Court to Review the Arthrex Decision

A decision to stay patent infringement litigation falls within a federal court’s power to control its docket. But in determining whether to stay litigation pending the Patent Office’s inter partes review (IPR) of the patent, courts still are guided by three factors: (1) whether the stay will simplify the litigation, (2) whether a stay would unduly prejudice (or present a clear tactical disadvantage to) the patent owner, and (3) whether the litigation has progressed to some advanced stage (e.g., discovery is complete, a trial date is set, etc.). Yet since the Supreme Court’s 2018 decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (discussed here), courts in the Eastern District of Texas have erected an unnecessarily high bar for stay-movants to leap.
Continue Reading Denying a Stay and Building an Airplane While Flying It