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Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

By Sharon M. Sintich, Ph.D. on Posted in Amendments, Appeals, Discovery, Estoppel, Institution / Denial, Inter Partes Review, IPR, Legislation, Post Grant Review, Real Party-in-Interest, Stays, Trial Procedures
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

Sovereign Immunity Protects State University Owned Patent from Inter Partes Review

By Sharon M. Sintich, Ph.D. on Posted in Inter Partes Review, IPR
The Patent and Trial Appeal Board dismissed petitions for inter partes review challenging the claims of a patent owned by a state university that had neither waived the protections offered it by the Eleventh Amendment nor consented to the trial.  Covidien LP v. University of Florida Research Foundation Inc., IPR2016-01274, -01275, -01276 (PTAB Jan. 25, … Continue Reading

Guidance on Requesting Motions for Sanctions

By Sharon M. Sintich, Ph.D. on Posted in Covered Business Method, Discovery, Inter Partes Review, IPR, Real Party-in-Interest, Trial Procedures
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

No Written Description, No Problem when Prosecution History Disclaimer is Applied

By Sharon M. Sintich, Ph.D. on Posted in Claim Construction, Inter Partes Review, Section 112
The Patent and Trial Appeal Board invoked the doctrine of prosecution history disclaimer to construe the claims at issue narrowly for the inter partes review of U.S. Patent No. 5,884,033; and thus, concluding that the claims had not been shown to be unpatentable in light of prior art. The Board rejected the Petitioner’s additional arguments … Continue Reading

Status Report on IPR Statistics for the Biotech/Pharma Technology Center

thumbnail image of DNA strandBy Sharon M. Sintich, Ph.D. on Posted in Biotechnology, Inter Partes Review, Post Grant Review
On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided a status report on Inter Partes Review/Post Grant Review in the Biotechnology and Chemical Technology Center 1600 during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference.  The statistics discussed during this BCP Conference are current as of May 31, 2016. … Continue Reading

An Overview of Amendments to the PTAB Rules

By Lynn L. Janulis, Ph.D. and Sharon M. Sintich, Ph.D. on Posted in Amendments, Claim Construction, Inter Partes Review
On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided an overview of the new PTAB rules during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference.  The final rule on Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board, which we have previously discussed [April 21, 2016 and August 20, 2015] … Continue Reading

Rare Grant of Rehearing of Denial of Petition for Inter Partes Review

thumbnail image of DNA strandBy Sharon M. Sintich, Ph.D. on Posted in Biotechnology, Institution / Denial, Inter Partes Review, Sections 102/103
The Board initially denied institution of Mylan Pharmaceuticals’ petition for inter partes review of U.S. Patent No. RE44,186, owned by AstraZeneca.  After a rare grant of Mylan’s request for rehearing, the Board reconsidered the record and decided to institute the IPR.  The decision to institute focused on the content of Mylan’s expert testimony; and although … Continue Reading
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