Inter Partes Review

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IPR and Estoppel after SAS Institute

The Supreme Court held on April 24, 2018 that if the Patent Office institutes and inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. SAS Institute, Inc. v. Iancu, (discussed in greater detail here). Within days, the Patent Office … Continue Reading

Patent Office Proposes to Jettison BRI in AIA Trials

The Patent Office today issued a press release of its notice of proposed rulemaking that would replace the broadest reasonable interpretation standard the Patent Trial and Appeal Board applies to construe unexpired patent claims and proposed substitute (amended) claims in AIA trial proceedings with the Phillips standard applied in patent cases before federal district courts … Continue Reading

Tribal Sovereign Immunity Alone Cannot Protect Patents from IPR

In late March, the Federal Circuit issued an order staying the PTAB proceedings concerning numerous related IPRs of patents issued to Allergan, Inc. (“Allergan”), but assigned to the Saint Regis Mohawk Tribe (“the Tribe”). These IPRs were headed toward a final hearing on the merits previously scheduled for April 3rd. In those IPRs, the PTAB denied the Tribe’s … Continue Reading

Motion to Amend Substituting Claims Granted in Full, Possibly Reflecting the Change Wrought By Aqua Products

The Board recently granted a motion to amend, to replace unpatentable claims with proposed substitute claims, a rare occurrence that may signal a change compelled by Aqua Products (summarized here). In Apple, Inc. v. Realtime Data, LLC, Case No. IPR2016-01737 (PTAB March 13, 2018), the Board determined that all challenged claims were unpatentable and then … Continue Reading

The Supreme Court Finds IPR Proceedings Constitutional

Inter partes review (IPR) is a procedure that allows a party to challenge the validity of an issued patent based on prior art patents or printed publications. IPRs first became available in 2013 following passage of the Leahy-Smith America Invents Act. Some have questioned whether this post-grant review of patent validity is constitutional. Today, the … Continue Reading

Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal Circuit’s … Continue Reading

Claim Term Read Out by PTAB Constituted “Harmless Error”

In a recent non-precedential decision, Snap-on Inc. v. Milwaukee Elec. Tool Corp., No. 2017-1305, 2018 WL 935454 (Fed. Cir. Feb. 16, 2018), the Federal Circuit affirmed the PTAB’s final written decisions in several IPRs that upheld challenged claims of Milwaukee Tool patents as nonobvious, although the court determined that the PTAB erred in construing a … Continue Reading

Is the PTAB Bound by a Prior Federal Circuit Claim Construction?

In Knowles Electronics LLC v. Cirrus Logic, Inc., No. 2016-2010 (Fed. Cir. Mar. 1, 2018), the Federal Circuit affirmed a PTAB decision that upheld an examiner’s rejection of claims for anticipation in an inter partes reexamination (IPX). The same claims had earlier been challenged, and determined to be not invalid (over different prior art), in … Continue Reading

Rituxan Patent Spared by Failure to Establish Product Label as “Printed Publication”

A patent relating to a method of treating rheumatoid arthritis using rituximab recently survived its fourth IPR challenge. Celltrion, Inc. v. Biogen, Inc., IPR2016-01614 (PTAB Feb. 21, 2018). The PTAB determined that the Petitioners failed to establish that the challenged claims of the patent were obvious over prior art, in part, because of the Petitioners’ … Continue Reading

Petitioner Failed to Show That Patent Owner’s Drug Product Package Insert Was a Printed Publication

On February 9, 2018, the PTAB denied Sandoz Inc.’s petition for inter partes review of U.S. Patent No. 9,512,216, a patent owned by AbbVie Biotechnology Ltd. The patent recites methods for treating moderate-to-severe chronic plaque psoriasis with adalimumab, a human anti-tumor necrosis factor α (TNFα) antibody.  The methods of the claimed invention involve subcutaneously administering … Continue Reading

Precedential and Informative Board Decision on Serial IPR Petitions

Serial IPR petitions directed to previously-challenged patents account for many of the petitions filed with the PTAB; however, 35 U.S.C. § 325(d) provides the Board with discretion to reject petitions where the same, or substantially the same, prior art or arguments have already been presented to the USPTO.  The Board recently designated as precedential part … Continue Reading

CAFC Hears IPR Appeal From Parties That Were Time-Barred From Filing Petition

Research Corporation Technologies, Inc. (RCT) sued Mylan Pharmaceuticals, Inc. (Mylan), Breckenridge Pharmaceutical, Inc. (Breckinridge), and Alembic Pharmaceuticals Ltd. (Alembic), in federal district court, accusing them of infringing United States Reissued Patent No. RE38,551. The patent claims pharmaceutical compositions useful in the treatment of epilepsy and other central nervous system disorders. Within one year of being … Continue Reading

Patent Owner Estoppel May Apply When Patent Owner Cancels Claims Before IPR Institution

In Arthrex, Inc. v. Smith & Nephew, Inc., No. 2017-1239 (Fed. Cir. Jan. 24, 2018), the Federal Circuit affirmed the PTAB’s entry of adverse judgment against Patent Owner Arthrex, before instituting inter partes review. Specifically, the PTAB entered judgment after Arthrex had disclaimed all challenged claims, but before the PTAB decided whether to institute a … Continue Reading

PTAB Defines Further Limitation to Sovereign Immunity Defense

PTABWatch Takeaway: Sovereign immunity is not available to dismiss an IPR challenge where the Patent Owner has filed an infringement action against the Petitioner. Ericsson v. Regents of the University of Minnesota, IPR2017-01186, -01197, -01200, -01213, -01214, and -01219 (Dec. 19, 2017). The Eleventh Amendment was rarely mentioned in the same breath as patent law … Continue Reading

PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit

In Wi-Fi One, LLC v. Broadcom Corporation, an en banc panel of the Federal Circuit decided on January 8, 2018, that the PTAB’s application of the 35 U.S.C § 315(b) time bar to institution of inter partes review (IPR) proceedings is reviewable on appeal. The decision overrules Achates Reference Publishing, Inc. v. Apple Inc., 803 F.3d … Continue Reading

The United States Can Have Standing in AIA Proceedings

Update: On October 26, 2018, the Supreme Court issued an order granting the patent owner’s petition for a writ of certiorari from the Federal Circuit’s judgment (discussed in the post below).  The Court will decide: “Whether the government is a ‘person’ who may petition to institute review proceedings under the AIA.”  The Court’s docket for … Continue Reading

Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable

Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner’s rejection of various claims in an ex parte reexamination because the Examiner’s interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court’s decision is noteworthy because … Continue Reading

PTAB Should Have Considered Argument Raised in “Redundant,” Non-instituted Ground

In CRFD Research Ltd. v. Matal, No. 2016-2198 (Fed. Cir. Dec. 5, 2017), the Federal Circuit determined that the PTAB erred in its obviousness analysis, in part by failing to consider an argument the IPR petitioner made in a ground that the PTAB determined was “redundant” to the instituted grounds. Petitioner Hulu, LLC, challenged claims … Continue Reading

CAFC: PTAB Abused Its Discretion When It Refused to Admit Expert’s Trial Testimony

In Ultratec, Inc. v. CaptionCall, LLC, No. 2016-1706 (Fed. Cir. Aug. 28, 2017), the Federal Circuit vacated and remanded multiple IPR decisions where the PTAB failed to consider material evidence and failed to explain its decisions to exclude the evidence. Ultratec and CaptionCall are currently litigating in both district court and before the PTAB.  Ultratec … Continue Reading

Board Issues Guidance on Motions to Amend in View of Aqua Products

The PTAB’s Chief Administrative Patent Judge issued a memorandum on November 21, 2017, providing guidance on motions to amend in view of the en banc decision of the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (discussed here and here).  The court in Aqua Products determined that the Board could … Continue Reading

Eli Lilly’s Pemetrexed Therapy Claims Survive Challenge At PTAB

The Federal Circuit’s decision in Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., 845 F.3d 1357 (Fed. Cir. 2017) attracted much attention for applying the theory of divided infringement in the context of pharmaceutical therapeutic regimen claims.  Before the Federal Circuit decision, a scrum of petitioners successfully petitioned for IPR of the Lilly patent, … Continue Reading
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