This Blog previously highlighted the risks involved when a petitioner does not submit an expert declaration with their petition. This risk may be lessened where the “the invention and prior art references are directed to relatively straightforward and easily understandable technology.” [Paper No. 41 at 17 n.6 of IPR2014-00169] (ruling in favor of petitioner despite its failure to present expert declaration until its Reply brief). However, a petitioner should strongly consider submitting an expert declaration to support their arguments in technology areas that are considered complex.
Continue Reading It’s Complicated: PTAB Reinforces Notion That Petitioners Should Consider Expert Testimony in Complex Technology Areas
Federal Circuit Gives a Geometry Lesson when Correcting the PTAB’s Claim Construction
In Pride Mobility Prods. Corp. v. Permobil, Inc., the Federal Circuit partially affirmed the PTAB’s decision cancelling claims in two Pride Mobility Products wheelchair patents. Disagreeing with the Board’s conclusions as to one of the canceled claims, the Federal Circuit concluded that the Board’s claim construction of “substantially planar” and “oriented perpendicular” did not make any “ordinary geometric sense.” In reversing the Board’s decision with respect to this single claim, the Federal Circuit gave the Board a much-needed refresher in geometry.
Continue Reading Federal Circuit Gives a Geometry Lesson when Correcting the PTAB’s Claim Construction
District Court Interprets IPR Estoppel Provision to Permit Reliance
In what appears to be the first district court case to address the issue directly, Judge Lefkow of the United States District Court for the Northern District of Illinois held that 35 U.S.C. § 315(e)(2) estoppel does not preclude parties from raising grounds in a civil litigation that were cumulative of grounds that could have been asserted during that party’s prior IPR proceeding, so long as the grounds are based on prior art that was not reasonably available during the IPR.
Continue Reading District Court Interprets IPR Estoppel Provision to Permit Reliance
A Second Bite at the Apple? Kyle Bass’s CFAD is Awarded IPR Institution of Follow-on Petitions
Remember when the PTAB denied institution of two IPR petitions filed by Kyle Bass’s Coalition for Affordable Drugs V LLC’s (CFAD) against Acorda Therapeutics, Inc. (Acorda)? Well, if at first you don’t succeed, try citing different prior art!
Continue Reading A Second Bite at the Apple? Kyle Bass’s CFAD is Awarded IPR Institution of Follow-on Petitions
PTAB Cannot Cancel Claim Based on New Argument Raised at Final Hearing
In Dell, Inc. v. Acceleron, LLC, Case No. 2015-1513, -1514 (Fed. Cir. 2016), the Federal Circuit vacated in part the PTAB’s final written decision in IPR2013-00440, on the basis that the PTAB improperly canceled a claim based on a factual assertion first raised by the petitioner at final hearing, too late for the patent owner to meaningfully respond.
Continue Reading PTAB Cannot Cancel Claim Based on New Argument Raised at Final Hearing
House of Cards: Weak Evidentiary Support Dooms IPR of Med Device Patent
On February 9, 2016, in C.R. Bard, Inc. v. Medical Components, Inc., IPR2015-01660, the PTAB refused to institute an IPR against US Patent No. 8,257,325, “Venous Access Port with Molded and/or Radiopaque Indicia.” The challenged claims were directed to a venous access port assembly with a marking to indicate the port is rated for power injection of a contrast fluid, which marking is visible by X-ray examination when the port is implanted.
Continue Reading House of Cards: Weak Evidentiary Support Dooms IPR of Med Device Patent
Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims
Update: Overruled in part by Aqua Products, Inc. v. Matal.
In Nike, Inc. v. Adidas AG, Case No. 2014-1719 (Fed. Cir. Feb. 11, 2016) (appeal of IPR2013-00067), the Federal Circuit provided further guidance on the PTAB’s administrative procedures regarding motions to amend claims. After considering Nike’s argument that 35 U.S.C. § 316(e) places the burden of proving unpatentability on the petitioner in an IPR, the court reaffirmed its decision in Microsoft v. Proxyconn that the Patent Office has appropriately placed the burden on the patent owner to show patentability of substitute claims.
Continue Reading Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims
Federal Circuit Confirms Board Can “Pick and Choose” Among Claims in Its Decision to Institute IPR
In Synopsys, Inc. v. Mentor Graphics Corporation, Appeal Nos. 2014-1516, 2015-1530 (Fed. Cir. Feb. 10, 2016), the Federal Circuit affirmed the PTAB’s judgment that two of the challenged claims were not invalid as anticipated. The court also held that (1) the final order of the Board need not address every claim raised in the petition for review, and (2) the Board did not err in denying Mentor’s motion to amend. This post focuses on the court’s holding that the Board need not address every claim raised in the petition for review. We further explore the Board’s denial of Mentor’s motion here.
Continue Reading Federal Circuit Confirms Board Can “Pick and Choose” Among Claims in Its Decision to Institute IPR
The Board’s Prerogative to Change its Mind May Doom Petition after Institution
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
Cross-Pollination of Information From Litigation to IPR Can Lead to Trouble for Parties
In a recent order by the magistrate judge in Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC (NJD, Jan. 22, 2016), defendants Amneal Pharmaceuticals and Par Pharmaceuticals were reprimanded and threatened with sanctions and monetary fines for trying to use confidential information from the litigation to move for additional discovery in a related IPR proceedings. The judge ruled this behavior violated a Discovery Confidentiality Order (DCO) in place in the litigation.
Continue Reading Cross-Pollination of Information From Litigation to IPR Can Lead to Trouble for Parties