Claim Construction

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In TriVascular, Inc. v. Samuels, Appeal No. 2015-1631 (Fed. Cir. Feb. 5, 2016), a unanimous Federal Circuit panel affirmed a PTAB final written decision that concluded the petitioner (TriVascular) did not meet its burden of demonstrating the challenged claims were unpatentable during inter partes review. TriVascular successfully petitioned the Board to institute the review after the patent owner (Samuels) accused TriVascular of infringing the same patent in a California federal court. TriVascular’s short-lived success, however, was tempered by the Board’s claim construction in the institution decision that differed from the construction TriVascular sought in its petition.
Continue Reading The Board’s Prerogative to Change its Mind May Doom Petition after Institution

Golden GooseOn January 15, 2016, the United States Supreme Court agreed to consider whether it is appropriate to give claims challenged in inter partes  review their “broadest reasonable construction.”  See Cuozzo Speed Tech., LLC v. Lee.  Given the Federal Circuit’s dismal recent track record when the Supreme Court has injected itself into disputed patent issues, practitioners are likely girding for a tectonic shift in IPR proceedings.  For those beleaguered by litigation from non-practicing entities, they may be justified in fearing that coveted IPR proceedings will become less useful as a bulwark against such cases.     
Continue Reading Court Reviews Use of Broadest Reasonable Construction IPR Proceedings

EPO FlagsTwo 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.
Continue Reading Evidence From Prosecution and District Courts Not Excluded

In the first full reversal of a PTAB IPR decision, the Federal Circuit reversed the PTAB’s ruling in Straight Path IP Group, Inc. v. Sipnet EU S.R.O, on the basis that the PTAB incorrectly construed the claim term “is,” in claims directed to a computer program for online communications. 
Continue Reading Federal Circuit Reverses PTAB Decision Based on Incorrect Construction of “Is”

Recently, in the pages of this blog, we reported on the dire predictions made at the IPO Annual Meeting here in Chicago of the “end of days” for patents. Win or Draw or Lose The purported culprits?  The PTAB and the America Invents Act’s newly enacted Inter Partes Review and Covered Business Method Review.  “Well, allow me to retort,” to borrow a line from Samuel L. Jackson’s character in Pulp Fiction.
Continue Reading How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings

Chicago SkylineWelcome to all of you who are new readers joining us from the IPO Annual Meeting (#IPOAM15). I hope that your time in Chicago was enjoyable and that you will add us to your RSS feeds or bookmark the blog and return often. For those who were unable to attend, the Tuesday panel titled “Post Grant Proceedings at the USPTO” offered a wide-ranging, lively discussion of the current state of post-grant proceedings and proposed solutions to perceived weaknesses in the current system.
Continue Reading IPO Annual Meeting Panel Spars Over Fairness of Current IPR System

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

Casino DealerBoehringer Ingelheim filed the petition at issue in IPR2015-00417 concurrently with the petitions at issue in IPR2015-00415 and IPR2015-00418 to challenge patents protecting methodologies for treating rheumatoid arthritis (RA) with rituximab, an FDA-approved antibody for treating certain cancers.  The IPR2015-00417 petition specifically challenged the fourteen claims of U.S. Patent No. 7,976,838, which are drawn to methods of administering rituximab to RA patients not responding to TNF-α inhibitors, a subset of RA patients.  The PTAB instituted an IPR of two of the 19 obviousness grounds contained in the petition.  Given the number, and nature, of grounds to be reviewed, and the outcome, it is apparent that the more grounds found in a petition, the greater the chance that the best arguments will be lost in the shuffle.
Continue Reading Gamble At Your Own Risk – The Danger Of Petition Overkill

Last Tuesday, for the first time ever, the Federal Circuit reversed the PTAB in an IPR decision by, among other things, ratcheting back the “broadest reasonable construction” standard for claim construction by declaring the PTAB’s construction “unreasonable.”  Idea LightbulbThe Court said that, “[e]ven under the broadest reasonable interpretation, the board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’”  Microsoft v. Proxyconn, 2014-1542, -1543 (Fed. Cir. June 16, 2015) (“A construction that is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language and disclosure will not pass muster’”) (internal citations omitted).
Continue Reading Footnote on Claim Amendment More Interesting than Federal Circuit Holding?

On June 11, 2015, the PTAB denied institution of Cepheid’s petition seeking inter partes review of Patent No. 5,643,723 directed to methods of detecting tuberculosis in humans (IPR2015-00255). To defeat institution, the patent owner successfully used its preliminary response to persuade the Board to (a) narrowly construe claim terms (despite the broadest-reasonable-construction standard), and (b) reject inherent anticipation and obviousness arguments offered by the petitioner’s expert witness.
Continue Reading PTAB Denies Institution in Cepheid v. Roche: PCR Primers Found Not Inherently Anticipated

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.