Inter Partes Review

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Empty vintage congress hall with seats and microphones.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, “PTAB Review Reform in Bill Approved by Senate Committee.” Both bills target abusive litigation tactics and post-grant proceedings, IPRs and PGRs.

Notably, amendments were introduced to H.R. 9 to prevent the types of IPRs filed by Kyle Bass-type hedge funds for monetary gain, and to permit the patent owner to support its preliminary response with new declaration evidence.
Continue Reading Patent Dispute Reform Legislation Is Now Pending in Both Houses of Congress

Update: Overruled in part byAqua Products, Inc. v. Matal.Pen shot on white background with high contrast cross process look

Earlier this week, we wrote about the post-hearing briefing the Federal Circuit invited in Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015), and the questions it posed regarding the PTAB’s administration of inter partes review. The court issued its decision in that case yesterday, answering some of the questions it posed and, for the first time, reversed a PTAB claim construction, vacated the PTAB’s decision of unpatentability, and remanded the IPR for further proceedings.
Continue Reading Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend

Following oral argument in an appeal of an IPR in which the PTAB canceled a number of challenged claims and denied the Patent Owner’s motions to amend, the Federal Circuit requested additional briefing from the parties and the Director of the USPTO (Intervenor), concerning interpretation of the PTAB rule for filing motions to amend during an IPR, 37 CFR § 42.121. Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015). The questions raised by the Federal Circuit panel suggest that the Court is likely to provide guidance on the PTAB’s claim amendment procedures when it issues its decision in the appeal.
Continue Reading Federal Circuit Expected to Provide Guidance on PTAB Claim Amendment Procedures

The PTAB granted leave on June 9 for the patent owner, Celgene Corporation, to file a motion for sanctions seeking dismissal in several IPRs¹ filed by the Coalition for Affordable Drugs. The Coalition for Affordable Drugs, an organization created by the hedge fund Hayman Credes Master Fund L.P., has filed multiple IPRs against pharmaceutical companies with the publicly announced intention to lower drug prices for everyone by invalidating patent protections that it contends have little value.
Continue Reading Is the Coalition for Affordable Drugs Abusing the IPR Process?

PatentAs discussed yesterday, on June 5, 2015, for just the second time in IPR history, the Board granted a patent owner’s contested motion to amend claims.  Reg Synthetic Fuels, LLC v. Neste Oil Oyj, IPR2014-00192 (PTAB June 5, 2015).¹  Are the facts of Neste really so different from the dozens of motions to amend the Board has previously denied, or has something changed?
Continue Reading PTAB Relaxing its Application of Law Governing IPR Claim Amendments

On June 5, 2015, the Board issued a final written decision in Reg Synthetic Fuels Llc, V.Neste Oil Oyj, IPR2014-00192, rejecting all challenged claims of U.S. Patent No. 8,278,492, but confirming the patentability of substitute claims submitted by Patent Owner.

The ‘492 patent is directed to a process for the manufacture of biodiesel fuel comprised of hydrocarbons from bio oils and fats.  The ’492 patent discloses a two-step process in which a feed stream of biological origin, diluted with a hydrocarbon, is first hydrodeoxygenated, and then isomerized.  According to the ’492 patent, deoxygenation via hydrogenolysis requires a large amount of hydrogen, and releases a significant amount of heat that must be dissipated.  To avoid these problems, the patented process “spikes” the feed stream with sulfur to favor the decarboxylation/decarbonylation reaction pathways.Continue Reading PTAB Allows Motion to Amend After it Rejects Original Patent Claims Directed to BioDiesel Fuel

Businessman iconWhether a non-identified party is a real party-in-interest to a proceeding is a highly fact-dependent question. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)).  “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Trial Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). 
Continue Reading Real Party-In-Interest Not Necessarily Established by Co-Defendants in Litigation

Soccer game planRecent statistics suggest that approximately two thirds of claims challenged in IPR proceedings are held to be invalid by the PTAB.  For PTAB trials instituted on petitions filed in Art Unit 1600 at the U.S. Patent and Trademark Office, which examines patent applications in the biotechnology and pharmaceutical arts, 100% of the final decisions rendered in the first two years of IPRs resulted at least one of the challenged claims being cancelled.  For patent owners, avoiding IPR institution can be critical.
Continue Reading Real Party in Interest – A Strategy For Attacking IPR Petitions.

Empty vintage congress hall with seats and microphones.Late June 2, the Senate Judiciary Committee released a new version of its Protecting American Talent and Entrepreneurship (PATENT) Act, S. 1137.  In response to prodding by industry groups, the bill now includes reforms directed at preventing abuse of the Patent Office’s post-grant proceedings, IPRs and PGRs, against patent owners The bill is here.
Continue Reading PTAB Review Reform in Bill Approved by Senate Committee

DiapersIt’s well understood that waiting until reply to present any expert testimony comes with a risk that the testimony will be excluded. But that’s not what happened in a recent IPR, where a petitioner waited until reply to present such testimony, and the PTAB, in view of the straightforward nature of the technology, found the challenged claims obvious.
Continue Reading Claims Found Obvious Even Though Petitioner Waited Until Reply to Present Expert Testimony

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.