Filed concurrently with the petitions at issue in IPR2015-00417 and IPR2015-00418, Boehringer Ingelheim filed the petition at issue in IPR2015-00415 seeking review of U.S. Patent No. 7,820,161 owned by Genentech and Biogen Idec. The Board’s institution decision steadily whittled down Boehringer’s varied attacks on the patent. Ultimately, IPR was granted on 2 of the 36 obviousness grounds in the petition (additional grounds were summarily denied for failure to identify the ground with particularity), with the two surviving grounds implicating half of the 12 claims of the ‘161 patent.
Continue Reading Grinning Patentees Get A Mulligan
In a rare event, the PTAB recently changed one of its decisions denying institution of inter partes review of a claim. That change was prompted by the IPR-petitioner’s request for rehearing on the PTAB’s original institution decision in Apple Inc. et al. v. Memory Integrity, LLC, IPR2015-00163. Decision on Institution (Paper 18, “Orig. Dec.”); Request for Rehearing (Paper 20, “Req. Reh’g”); Decision on Request for Rehearing (Paper 22, “Dec.”). A search of Docket Navigator reveals that fewer than one in five such requests for rehearing are granted. 
The Court said that, “[e]ven under the broadest reasonable interpretation, the board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’” Microsoft v. Proxyconn, 2014-1542, -1543 (Fed. Cir. June 16, 2015) (“A construction that is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language and disclosure will not pass muster’”) (internal citations omitted).
A petition for IPR must align the evidence and arguments with the various limitations of the challenged claims. See 37 C.F.R. § 42.22(a)(2) (the “petition . . . must include . . . [a] full statement of the reasons for the relief requested, including a detailed explanation of the significance of the evidence.” 
Defendants in litigation seeking to take advantage of IPR must file a petition within one year of the date of service of the complaint alleging patent infringement. Defendants may be tempted to delay filing the IPR petition to avoid revealing strategy early in the litigation proceeding. Delaying the filing, however, may risk the granting of a stay of the related litigation, as highlighted by four district court decisions¹ issued last week.
The House of Representative’s Innovation Act, H.R. 9, was voted to the House floor for further consideration on June 11, by a 24-8 vote of its Judiciary Committee, after the Senate’s PATENT Act, S. 1137, was voted to the Senate floor on June 4 by a 16-4 vote of its Judiciary Committee. See prior entry, “