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”
CAFC Confirms Constitutionality of Inter Partes Review
The Federal Circuit rejected a patentee’s appeal arguing that inter partes review is unconstitutional for violating Article III and the Seventh Amendment right to a jury trial. MCM Portfolio LLC v. Hewlett-Packard Co., No. 2015-1091 (Fed. Cir. December 2, 2015). The precedential decision affirms the PTAB’s authority to adjudicate the validity of issued patents.
Continue Reading CAFC Confirms Constitutionality of Inter Partes Review
Federal Circuit Weighs in on Use of Evidence Cited in a Reply
In a decision last week, the Federal Circuit remanded for further consideration the Board’s final written decision concluding that the challenged claims of Verinata Health, Inc.’s U.S. Patent No. 8,318,430 were not obvious. See Ariosa Diagnostics v. Verinata Health,Inc., Case No. 2015-1215, 2015-1226 (Fed. Cir. Nov. 16, 2015). The Board’s conclusion was based, in part, on its decision to accord no weight to an aspect of declaration testimony the Petitioner (Ariosa) offered in support of its reply brief.
Continue Reading Federal Circuit Weighs in on Use of Evidence Cited in a Reply
Federal Circuit Tells Patent Owners That They Can’t Get It If They Don’t Ask For It
If you’re a patent owner faced with an expert declaration submitted by an IPR petitioner on reply, try to respond, and in multiple ways. Don’t just complain that the declaration should be excluded. This was the Federal Circuit’s recent message in Belden Inc. v. Berk-Tek LLC.
Continue Reading Federal Circuit Tells Patent Owners That They Can’t Get It If They Don’t Ask For It
Broader is Better for the Petitioner, but Inherency is Intrinsically Difficult
Two recent PTAB final written decisions highlight the benefits that the “broadest reasonable interpretation” standard for claim construction provides to Petitioners, as well as the difficulty Petitioners face in proving inherent anticipation. The PTAB instituted two IPRs on the same patent: one on an anticipation ground, and another on an obviousness ground. The Petitioner failed to prove anticipation, but prevailed on obviousness of all claims of the patent.
Continue Reading Broader is Better for the Petitioner, but Inherency is Intrinsically Difficult
Secondary Considerations Finally Found to be Persuasive
In what appears to be only the second instance¹ to date, evidence of secondary considerations helped a Patent Owner defend against a Petitioner’s obviousness challenge during an IPR proceeding. In Phigenix, Inc. v. Immunogen, Inc., the Board issued its final written decision and held that each of the eight challenged claims were not unpatentable, finding the Patent Owner “advances persuasive evidence” regarding the prior failure of others and the long-felt need in the industry. Phigenix, Inc. v. Immunogen, Inc., IPR2014-00676, Paper 39, (“Dec.”) (PTAB Oct. 27, 2015).
Continue Reading Secondary Considerations Finally Found to be Persuasive
Don’t Try To Observe Your Own Witness
While it is obviously frustrating when an opponent files a paper citing snippets of your own expert’s testimony out of context, a party’s attempt here to right the wrong after the fact was rebuffed by the PTAB and illustrates why mastering the PTAB’s guidelines and prior decisions, and thinking ahead with the same firmly in mind, is paramount. Seagate Technology (US) Holdings, Inc. v. Enova Technology Corp., IPR2014-01178, Paper 45 (Oct. 28, 2015).
Continue Reading Don’t Try To Observe Your Own Witness
A 200% Increase in Appeals of Patent Office Decisions to the Federal Circuit
In August of 2012, the Federal Register published the Patent Office’s estimate of the number of AIA trial petitions the Office then expected to receive in each of the three succeeding fiscal years (each such year ends September 30). In October of 2015, the Patent Office published a report of the number of trial petitions it actually received during these fiscal years. The table below presents this same information:
Continue Reading A 200% Increase in Appeals of Patent Office Decisions to the Federal Circuit
Coalition for Affordable Drugs PTAB Scorecard
In the ongoing saga of the Coalition for Affordable Drugs (CFAD) vs. the pharmaceutical industry, there has been quite a bit of movement recently by the PTAB on institution of many of CFAD’s earliest-filed IPR petitions. To date, CFAD has filed 33 petitions for IPR, some of them multiple petitions against the same patent, and there have been 17 institution decisions by the PTAB. So, how does CFAD seem to be faring: are they having more or less success than any other petitioner?
Continue Reading Coalition for Affordable Drugs PTAB Scorecard
Split PTAB Ruling Allows Parties to Join Their Own Petitions
An expanded, split panel of the PTAB recently decided that it may be appropriate to join the same party’s serially-filed IPR petitions into a single proceeding, even when one such petition would otherwise be time-barred but for the joinder. Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (PTAB Oct. 5, 2015). The decision offers guidance on situations where the PTAB may exercise discretion in consolidating proceedings involving the same petitioner, and broadly interprets the statute to permit joinder of the same parties and issues.
Continue Reading Split PTAB Ruling Allows Parties to Join Their Own Petitions