In a recent appeal from a PTAB final written decision, the Federal Circuit reversed the Board’s determination that all claims of a Duke patent were unpatentable (Duke Univ. v. BioMarin Pharm. Inc., Appeal No. 2016-1106 (Fed. Cir., April 25, 2017). The court concluded that certain of the Board’s claim constructions were incorrect, and that others, while appropriate, were mis-applied and reversed the Board’s decision on anticipation, as well as obviousness of some claims.
Continue Reading Claim Construction Sends Duke’s Patent Back to PTAB for Reconsideration, In Part
Owner of Hot-Work Steel Processing Patent Burned by Its Own IPR Evidence
In Rovalma, S. A. Böhler-Edelstahl GmbH & Co., No. 2016-2233 (Fed. Cir. May 11, 2017), the Federal Circuit vacated the PTAB’s final written decision and remanded the case for the PTAB to provide a further explanation for its determination that the challenged claims were obvious. According to the court, the PTAB’s decision lacked sufficient detail necessary for the court to determine if the PTAB’s findings were supported by substantial evidence, or if the PTAB provided the Patent Owner proper notice and opportunity to respond to the PTAB’s claim construction and theory of unpatentability.Continue Reading Owner of Hot-Work Steel Processing Patent Burned by Its Own IPR Evidence
Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other
In Wasica Finance GmbH v. Continental Automotive Sys., Inc., (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed-in-part and reversed-in-part two PTAB final written decisions cancelling some but not all challenged claims of U.S. Patent No. 5,602,524 (“the ‘524 patent”). The PTAB and court decisions are interesting because together they highlight the consequence of not supporting seemingly strong arguments with expert witness testimony. Further, the decisions highlight the consequence of not explaining how facts implicate esoteric nuances in the patent laws.Continue Reading Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other
Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver
In the latest development in the ongoing patent battle between Google and SimpleAir Inc., a Federal Circuit panel agreed with SimpleAir that Google waived a claim construction it asserted on appeal because Google had failed to argue that construction before the PTAB.
SimpleAir originally asserted a series of patents against Google, including U.S. Patent No. 8,601,154 (“the ’154 patent”) directed to a data communication system connecting on-line networks with on-line and off-line computers. Google challenged the validity of the ’154 patent in an IPR. The PTAB determined the challenged claims of the ’154 patent were not invalid, concluding that Google failed to identify in the prior art “a central broadcast server,” recited in the challenged claims. Google appealed the PTAB’s final written decision, and argued that the PTAB erred in its interpretation of this limitation.
Continue Reading Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver
Presentation Not Qualified as a Printed Publication Because Audience Lacked Expertise
In a recent final written decision (Trustees of the University of Pennsylvania v. Coalition for Affordable Drugs VIII, LLC, IPR2015-01835, Paper No. 56 (PTAB Mar. 6, 2017)), the Board determined that the Coalition for Affordable Drugs (“Petitioner”) failed to demonstrate that claims 1-10 of U.S. Patent No. 8,618,135 (“the ’135 patent) were obvious. The claims recite methods of treating a subject suffering from a disorder associated with hyperlipidemia and/or hypercholesterolemia. Petitioner asserted these claims were obvious because the alleged prior art taught applying step-wise escalating doses of a microsomal triglyceride transfer protein (MTP) inhibitor to treat hyperlipidemia and hypercholesterolemia. As in cases we have previously discussed here and here, the Petitioner failed to satisfy its burden of proof because it did not show that the alleged prior art qualified as a “printed publication.”
Continue Reading Presentation Not Qualified as a Printed Publication Because Audience Lacked Expertise
PTAB Grants Hospira Petition to Institute IPR of Genentech Antibody Purification Patent
IPRs are an attractive option for biosimilar applicants to clear the patent landscape before delving into litigation under the Biologics Price Competition and Innovation Act of 2009 (BPCIA), which is still in its infancy. Roche’s Herceptin® (trastuzumab) is a prime target for biosimilar makers, accounting for sales of over $6.5 billion in 2015. Mylan, Celltrion, and Pfizer, all with competing biosimilar candidates, have filed IPR petitions challenging patents reportedly covering trastuzumab. Recently, the PTAB granted a petition filed by Hospira (subsidiary of Pfizer) to institute IPR of U.S. Patent No 7,807,799 (“the ’799 patent”), directed to protein A affinity chromatography. Hospira, Inc. v. Genentech, Inc., IPR2016-01837, Paper No. 19 (April 7, 2017).
Continue Reading PTAB Grants Hospira Petition to Institute IPR of Genentech Antibody Purification Patent
Evidence of Secondary Considerations Fails to Establish Nexus to Challenged Claims
In IPR 2016-00039, Costco challenged claims 1, 12 and 14 of USPN 7,228,588 owned by Bosch and drawn to beam (non-yoked) windshield wipers with spoilers to keep the wipers in contact with the windshield in high winds. Petitioner combined one reference with each of two other references in support of obviousness challenges to the claims. In defense of the claims, Patent Owner relied on evidence in the challenged patent and on expert testimony. The Board found PO’s evidence contradicted by other evidence of record and found PO’s expert testimony related to challenged patents not at issue in this IPR. Further, the Board found that evidence of secondary considerations of non-obviousness was insufficiently developed and held the challenged claims unpatentably obvious.
Continue Reading Evidence of Secondary Considerations Fails to Establish Nexus to Challenged Claims
Teaching Away for Dummies
In Meiresonne v. Google, Inc., No. 2016-1755 (Fed. Cir. Mar. 7, 2017), the Federal Circuit affirmed the PTAB’s final written decision in IPR2014-01188 that the challenged claims in U.S. Patent No. 8,156,096 (the “’096 patent”) are unpatentable as obvious over the 1997 book “World Wide Web Searching for Dummies, 2nd Edition” by Brad Hill (“Hill”) and U.S. Patent No. 6,271,840 (“Finseth”). The sole issue before the Federal Circuit was whether Hill and Finseth teach away from the claimed invention.
The ’096 patent teaches a directory website that contains (1) a plurality of links to supplier websites, (2) “a supplier descriptive portion” located near a corresponding supplier link, (3) “a descriptive title portion” describing the class of goods or services listed on the website, and (4) “a rollover view area” that displays information about at least one of the suppliers corresponding to a link.
Continue Reading Teaching Away for Dummies
Joinder Does Not Prevent Application of IPR Estoppel Provision
A little more than a month after the Delaware district court narrowly interpreted the IPR estoppel provision to suggest that it may not be necessary to include all known grounds so as to avoid estoppel in district court litigation, the same court issued a decision suggesting that the IPR estoppel provision may not be so narrow after all. The decision adds to the growing confusion over the scope of the estoppel provision Congress wrote into the AIA.
On December 20, 2013, Parallel Networks Licensing, LLC (“Parallel Networks”) sued International Business Machines Corporation (“IBM”) in the Delaware district court for infringement of U.S. Patent Nos. 5,894,554 (“the ‘554 Patent”) and 6,415,335 (“the ‘335 Patent”). Parallel Networks Licensing, LLC v. International Bus. Machs. Corp., Case No. 13-2072 (D. Del.). IBM answered and counterclaimed seeking declaratory judgments of non-infringement and invalidity based on anticipation and obviousness.
Continue Reading Joinder Does Not Prevent Application of IPR Estoppel Provision
CFAD Fails to Knock Out 4 Acorda Patents to Multiple Sclerosis Drug
A recent set of final written decisions in four IPRs against Acorda Therapeutics puts more marks in the loss column for Kyle Bass and the Coalition for Affordable Drugs. In IPRs 2015-01850, -01853, -01857 and -01858 (Coalition for Affordable Drugs v. Acorda Therepuatics Inc.), the Coalition for Affordable Drugs (CFAD) requested review of Acorda Therapeutics U.S. patents U.S. 8,440,703, U.S. 8,007,826, U.S. 8,663,865, and U.S. 8,354,437, respectively, directed to sustained release formulations of fampridine (4-AP) and methods for administering the drug to treat neurological disease, such as multiple sclerosis (MS). Certain aspects of the inventions in the four patents are directed to methods of increasing walking speed of patients with MS by administering 4-AP twice daily for at least two weeks, in a dose of about 10 to 15 mg of 4-AP. The PTAB instituted review of the issued claims in each of the four patents as potentially obvious in view of a combination of prior art, including an SEC filing by Acorda that included reference to ongoing clinical trials.
Continue Reading CFAD Fails to Knock Out 4 Acorda Patents to Multiple Sclerosis Drug