The Board’s decisions instituting inter partes review on several grounds in two petitions filed by Deere & Company provide guidance on possible ways to organize an IPR petition and identify grounds for review. Deere filed two petitions (IPR2015-00898 and -00899) against U.S. Patent No. 6,202,395 (Gramm) asserting parallel challenges based on slightly different groupings of prior art. The Patent Trial and Appeal Board instituted trial on both, offering four observations that may be helpful when preparing an IPR petition.
Continue Reading Decisions in Deere & Company v. Gramm provide tips for petitions
APJs Dispute Requirements for a Reference to Qualify as a Printed Publication
Final written decisions, IPR2014-00781, IPR2014-01086, IPR2014-00821, IPR2004-00580, IPR2014-00802, for IPRs of several patents owned by Zond, LLC, which include rare dissenting opinions, illustrate different views of APJs concerning the requirements for establishing that a reference is a printed publication under 35 U.S.C. § 102(b). These decisions provide helpful guidance on how to address references whose status as a printed publication may be in dispute.
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IPR Institution Decision Precluded as Evidence in Litigation, Again
No precedential Federal Circuit decision addresses the effect of an IPR institution decision on parallel litigation tried 
before a jury. As a result, some district courts have allowed IPR institution decisions regarding a patent-in-suit to be presented as evidence in a pending litigation (see Evidence of Denial of IPR Institution Allowed in District Court Infringement Action), while many have not.
Continue Reading IPR Institution Decision Precluded as Evidence in Litigation, Again
PTO Requests Congress Change AIA Proceedings
As required by the Leahy-Smith America Invents Act, the PTO issued a report to Congress in September summarizing implementation of the AIA in the four years since the Act went into effect. The report proposes recommended changes to the law that the PTO would like to see enacted. A full copy of the report is available here.Continue Reading PTO Requests Congress Change AIA Proceedings
Hedge Funds Free to Heckle Without Risk of Sanctions
Hedge funds and their affiliates are now free to heckle patent owners with IPR petitions, regardless of their admitted “profit motive.” On September 25, 2015, an expanded six-judge panel of the PTAB denied Celgene’s Motion for Sanctions against the Coalition For Affordable Drugs (CFAD). Celgene had requested dismissal of five IPR petitions filed by CFAD because the petitions represent a misuse of inter partes reviews as an investment strategy and were “an ongoing abuse of the inter partes review process that will be an unwarranted burden on the Board, and innovators like Patent Owner.”
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Pharma industry continues efforts to exempt patents from IPR
The pharmaceutical industry continues its efforts to exempt pharmaceutical and biotechnology patents from inter partes review
(IPR). Neither the House’s Innovation Act nor the Senate’s PATENT Act currently contain any provisions that would exempt particular patents from these proceedings. But as we reported in June, some members of the Senate judiciary committee appear sympathetic to addressing the pharmaceutical industry’s concerns with an exemption for pharmaceutical and biotechnology patents.
Continue Reading Pharma industry continues efforts to exempt patents from IPR
IPO Annual Meeting Panel Spars Over Fairness of Current IPR System
Welcome to all of you who are new readers joining us from the IPO Annual Meeting (#IPOAM15). I hope that your time in Chicago was enjoyable and that you will add us to your RSS feeds or bookmark the blog and return often. For those who were unable to attend, the Tuesday panel titled “Post Grant Proceedings at the USPTO” offered a wide-ranging, lively discussion of the current state of post-grant proceedings and proposed solutions to perceived weaknesses in the current system.
Continue Reading IPO Annual Meeting Panel Spars Over Fairness of Current IPR System
PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day
The Patent Trial and Appeal Board (PTAB) is granting inter partes review (IPR) petitions at a 70% clip. Imagine the surpris
e, 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 that the tides have turned for patent challengers?
Continue Reading PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day
Mind The Gap: The PTAB Will Not Bridge It For You
Petitioners should beware gaps in their evidence and reasoning. Two DepoMed patents recently survived their second IPR challenge because the petitioner failed to meet its burden of proof. The PTAB rejected petitioner’s obviousness arguments as “overly vague and nonspecific,” concluding that petitioner failed to “explain persuasively why or how a person of ordinary skill in the art would modify the drug formulation” of the prior art to develop the claimed formulation, and failed to show a reasonable expectation of success.
Continue Reading Mind The Gap: The PTAB Will Not Bridge It For You
PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard
Score another win for pharma against investment funds-turned-IPR petitioners. On September 21, 2015, the PTAB denied institution of Ferrum Ferro Capital, LLC’s (“FFC”) petition for IPR of an Allergan patent claim related to its Combigan® eye-drop product for treating glaucoma. This dispute has attracted publicity for having bled into the courts, where Allergan has sued FFC for extortion, unfair competition, and malicious prosecution. The PTAB’s non-appealable denial of FFC’s petition is obviously a significant victory for Allergan, and follows the PTAB’s recent denials of two IPR petitions filed by the Coalition For Affordable Drugs.
Continue Reading PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard