Estoppel

Estoppel Applied in Second CBM to Later-Obtained Patent and Evidence

Six days after issuing a final decision holding the claims of U.S. Patent No. 7,711,100 unpatentable under 35 U.S.C. § 101 in a first CBM review, Square, Inc. v. Unwired Planet, LLC, CBM2014-00156, (PTAB Dec. 22, 2015), the PTAB issued a decision denying institution in a second CBM Petition filed by the same Petitioner for … Continue Reading

PTAB Refuses to Terminate AIA Trial Despite Applying the Estoppel Provision to Dismiss the Petitioner

By Sandip H. Patel on November 17, 2015 Posted in Covered Business Method, Estoppel, Legislation, Section 101, Trial Procedures

The PTAB recently issued an order applying the estoppel provision of the AIA (35 U.S.C. § 325(e)(1)) to dismiss a petitioner from covered business method (CBM) patent review proceedings a few days before a consolidated final hearing. Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015) (common order involving CBM2015-00016 and CBM2015-00018). … Continue Reading

PTAB Dismisses Biosimilar Company’s IPR Petition Without Prejudice, When Petitioner Loses its Expert

By Marshall Gerstein on October 13, 2015 Posted in Biotechnology, Estoppel

The PTAB recently granted Celltrion’s motion to dismiss its IPRs without prejudice, after Celltrion suddenly lost its ability to rely on a key expert declaration. Celltrion had filed IPR petitions against two patents covering use of Rituxan®, and had sought joinder with pending IPRs filed by Boehringer Ingelheim (BI) against the same patents. Although Celltrion … Continue Reading

PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day

By Benjamin T. Horton on September 29, 2015 Posted in Estoppel, Institution / Denial, Inter Partes Review, Sections 102/103

The Patent Trial and Appeal Board (PTAB) is granting inter partes review (IPR) petitions at a 70% clip. Imagine the surprise, then, when on a single day, September 16, 2015, petitioners went an incredible 0 for 5—the PTAB denied five petitions for IPR and granted none! It seemed like a statistical improbability. Maybe a signal … Continue Reading

PTAB Applies the Estoppel Provision of the AIA to Deny an IPR Petition

By Sandip H. Patel on September 21, 2015 Posted in Biotechnology, Estoppel, Institution / Denial, Inter Partes Review, Trial Procedures

The PTAB recently denied institution of an inter partes review (IPR) on the basis of the estoppel provision of the AIA (35 USC § 315(e)). Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (PTAB Sept. 16, 2015). The decision is not appealable, and is significant because it offers guidance on how the PTAB will construe this … Continue Reading

PTAB Review Reform in Bill Approved by Senate Committee

By Marshall Gerstein on June 3, 2015 Posted in Estoppel, Inter Partes Review, Legislation, Post Grant Review

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