Inter Partes Review

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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

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

Second Chance Just Ahead on Green Billboard.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

gavel on stack of documents on white backgroundThe 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

PhD BinderFinal 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.
Continue Reading APJs Dispute Requirements for a Reference to Qualify as a Printed Publication

No precedential Federal Circuit decision addresses the effect of an IPR institution decision on parallel litigation tried Forbidden Symbolbefore 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

Improvement circle of plan, implement, evaluate, improve, business concept

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 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.”
Continue Reading Hedge Funds Free to Heckle Without Risk of Sanctions

The pharmaceutical industry continues its efforts to exempt pharmaceutical and biotechnology patents from inter partes reviewBalance Scale (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

Chicago SkylineWelcome 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

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.