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Patentee’s Admissions of Obviousness Insufficient Basis for Cancellation in Inter Partes Review

By Thomas L. Duston on Posted in Inter Partes Review, IPR, Legislation, Sections 102/103
In Qualcomm, Inc. v. Apple, Inc., No. 20-1558 (Fed. Cir. Feb. 1, 2022), the Federal Circuit concluded that a patentee’s admissions concerning the content of the prior art, contained in the specification of the challenged patent, cannot serve as a ground to invalidate that patent in inter partes review.  The court, therefore, vacated decisions of … Continue Reading

Proposed Hatch-Waxman Amendment Would Effectively Eliminate IPR Challenges by Generics

By Chelsea M. Murray on Posted in Amendments, Inter Partes Review, Legislation
On June 13, 2018, Senator Orrin Hatch (R-UT) introduced to the Senate Judiciary Committee an amendment to restore the careful balance sought in the Hatch-Waxman Act, which provided incentives for both pharmaceutical innovation and drug affordability. The amendment, titled the Hatch-Waxman Integrity Act of 2018, would modify the IPR process for pharmaceuticals—under Hatch-Waxman and the … Continue Reading

Interim Director Matal Expresses High Confidence in Constitutionality of AIA Trials

By Sandip H. Patel on Posted in Appeals, Inter Partes Review, IPR, Legislation
An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional Joe Matal, interim director of the Patent Office, addressed the IPO’s 45th Annual Meeting on September 19, 2017, in San Francisco. He said that the Office, and particularly the PTAB, experienced a productive yet tumultuous five years since the … Continue Reading

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

By Sharon M. Sintich, Ph.D. on Posted in Amendments, Appeals, Discovery, Estoppel, Institution / Denial, Inter Partes Review, IPR, Legislation, Post Grant Review, Real Party-in-Interest, Stays, Trial Procedures
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

Supreme Court to Decide Whether PTAB May Institute/Decide AIA Trials on Fewer than All Challenged Claims

By Sandip H. Patel on Posted in Legislation, Trial Procedures
An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims The Supreme Court issued an order on May 22, 2017, granting SAS Institute’s petition for a writ of certiorari to review the Federal Circuit’s judgment in SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 … Continue Reading

Pending Bill Would Deliver More Judicial Scrutiny to USPTO and FDA Rules

By Michael Muczynski on Posted in Claim Construction, Institution / Denial, Inter Partes Review, Legislation, Post Grant Review
 The House of Representatives recently sent to the Senate its bill (H.R.5) that combines six previous regulatory reform bills, including, as Title II of the bill, the “Separation of Powers Restoration Act.”  Section 202 of the bill effectively removes the option for courts to apply Chevron deference to agency rulemaking and interpretations.  Thus, rather than deciding … Continue Reading

Federal Circuit to take AIA Time Bar issue En Banc

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, Legislation, Trial Procedures
An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) … Continue Reading

Federal Circuit Dismisses Appeal Based on AIA Time Bar, But Two Judges Call for En Banc Review

By Ryan N. Phelan on Posted in Appeals, Inter Partes Review, IPR, Legislation, Trial Procedures
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

By Sandip H. Patel on Posted in Discovery, Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

The Possibility of Inconsistent Results Inherent to Congress’s Design of AIA Trial Reviews

By Sandip H. Patel on Posted in Estoppel, Institution / Denial, Inter Partes Review, IPR, Joinder, Legislation, Trial Procedures
In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court recognized that a “district court may find a patent claim to be valid, and the agency may later cancel that claim in its own review.”  The Court also recognized that because of the different evidentiary burdens in court versus before the agency—the Patent Office—“the possibility … Continue Reading

Supreme Court Vacates Federal Circuit Decision that Refused to Review PTAB’s Application of the Time Bar to AIA Trials

By Sandip H. Patel on Posted in Institution / Denial, Inter Partes Review, Legislation
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

Groundhog Day . . . Again: Observations on the Oral Argument in Cuozzo Speed Technologies, LLC v. Lee

By Thomas L. Duston on Posted in Amendments, Claim Construction, Institution / Denial, Inter Partes Review, Legislation
The much anticipated argument in Cuozzo Speed Technologies, LLC v. Lee occurred Monday, April 25, 2016 before the United States Supreme Court.  One can glean some insight from the Justices’ questions and remarks, but the ultimate outcome in this seminal decision remains uncertain.  The following reflects the tenor of the remarks of seven of the … Continue Reading

Called Third Strike, Is the PTO Director Out? Federal Circuit Again Rejects Intervenor’s Argument that it Lacks Jurisdiction to Review Qualifications for CBM Review

By Thomas L. Duston on Posted in Appeals, Covered Business Method, Institution / Denial, Legislation
The Federal Circuit has rejected for the third time efforts by the Director of the PTO to preclude appellate review of whether challenged patent claims were properly deemed “covered business methods,” and thereby subject to CBM review.  Previously, in Versata Development Group, Inc. v. SAP America, Inc., the Federal Circuit concluded that its jurisdiction to … Continue Reading

Federal Circuit Affirms PTAB Panel’s Authority to Institute IPRs and Issue Final Decision

By Heather R. Kissling on Posted in Institution / Denial, Inter Partes Review, Legislation
The AIA explicitly bestows the USPTO Director with the authority to institute IPRs and the PTAB with the authority to decide the ultimate question of patent validity.  The Director delegated the authority to institute IPRs to the Board, but is it proper to assign the decision to the same APJs that render a final decision?  … Continue Reading

Supreme Court to Kill Golden Goose? Court Announces It Will Review Use of Broadest Reasonable Construction in IPR Proceedings

By Thomas L. Duston on Posted in Claim Construction, Legislation
On January 15, 2016, the United States Supreme Court agreed to consider whether it is appropriate to give claims challenged in inter partes  review their “broadest reasonable construction.”  See Cuozzo Speed Tech., LLC v. Lee.  Given the Federal Circuit’s dismal recent track record when the Supreme Court has injected itself into disputed patent issues, practitioners … Continue Reading

Dissent: “Deferential review by the Federal Circuit falls short of the legislative purpose of providing optimum determination of patent validity.”

By Tiffany D. Gehrke on Posted in Appeals, Inter Partes Review, Legislation, Sections 102/103
In Merck & CIE v. Gnosis S.P.A., Gnosis Bioresearch S.A., Gnosis U.S.A. Inc., Case No. 2014-1779 (Fed. Cir. Dec. 17, 2015), the Federal Circuit affirmed the Board’s decision that the contested claims were invalid for obviousness, determining that the Board’s factual findings were supported by substantial evidence, and agreeing with the Board’s conclusion of obviousness.  … Continue Reading

PTAB Refuses to Terminate AIA Trial Despite Applying the Estoppel Provision to Dismiss the Petitioner

By Sandip H. Patel on Posted in Covered Business Method, Estoppel, Legislation, Section 101, Trial Procedures
The PTAB recently issued an order applying the estoppel provision of the AIA (35 U.S.C. § 325(e)(1)) to dismiss a petitioner from covered business method (CBM) patent review proceedings a few days before a consolidated final hearing. Apple Inc. v. Smartflash LLC, CBM2015-00015, Paper 49 (PTAB Nov. 4, 2015) (common order involving CBM2015-00016 and CBM2015-00018). … Continue Reading

A 200% Increase in Appeals of Patent Office Decisions to the Federal Circuit

By Sandip H. Patel on Posted in Appeals, Covered Business Method, Inter Partes Review, Legislation
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 … Continue Reading

How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings

By Thomas L. Duston on Posted in Amendments, Claim Construction, Institution / Denial, Legislation, Sections 102/103
Recently, in the pages of this blog, we reported on the dire predictions made at the IPO Annual Meeting here in Chicago of the “end of days” for patents.  The purported culprits?  The PTAB and the America Invents Act’s newly enacted Inter Partes Review and Covered Business Method Review.  “Well, allow me to retort,” to … Continue Reading

PTO Requests Congress Change AIA Proceedings

By Julianne M. Hartzell on Posted in Inter Partes Review, Joinder, Legislation, Post Grant Review, Trial Procedures
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 … Continue Reading

Pharma industry continues efforts to exempt patents from IPR

thumbnail image of DNA strandBy John R. Labbé on Posted in Biotechnology, Inter Partes Review, Legislation
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 … Continue Reading

IPO Annual Meeting Panel Spars Over Fairness of Current IPR System

By Julianne M. Hartzell on Posted in Claim Construction, Covered Business Method, Institution / Denial, Inter Partes Review, Legislation, Post Grant Review, Trial Procedures
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 … Continue Reading

PTAB Denies Institution of Two IPR Petitions Filed by Hedge Fund

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest, Sections 102/103
As the patent community anxiously awaits the PTAB’s decision concerning whether the Coalition For Affordable Drugs (CFAD) should be sanctioned for filing an IPR petition against a Celgene patent¹, the PTAB recently denied institution of two IPR petitions² the CFAD filed concerning two Acorda patents that cover Ampyra, a billion-dollar drug for treating multiple sclerosis.  The … Continue Reading
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