Post Grant Review

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PTAB Institutes Third Biotech/Pharma Post-Grant Review

thumbnail image of DNA strandBy Heather R. Kissling on Posted in Biotechnology, Post Grant Review, Section 112
To date, only 43 petitions for Post-Grant Review have been filed with the PTAB.  Nine PGR petitions (21% of total petitions) have been filed to challenge patents arising from Art Unit 1600, which examines applications directed to biotechnology and organic chemistry subject matter.  The PTAB recently instituted the third ever PGR for a biotech-related patent … Continue Reading

Post-Filing Claim Amendments Don’t Change the Effective Filing Date for Post Grant Review

By Michael Muczynski on Posted in Amendments, Institution / Denial, Post Grant Review
In considering a novel issue of Post-Grant Review (PGR) eligibility, the Patent Trial and Appeal Board followed the straightforward language of the America Invents Act (“AIA”), and longstanding precedent, holding that post-filing amendments to a pre-AIA patent application do not change its effective filing date and, thus, do not make it eligible for PGR.  David … Continue Reading

Petitioner Not Time-Barred By Service of COFC Complaint

By Ryan J. Schermerhorn on Posted in Institution / Denial, Inter Partes Review, IPR, Post Grant Review
Neither the Federal Circuit nor the PTAB has provided much guidance concerning the proper application of the one-year time-bar for filing IPRs when privity is alleged.  Recently, however, in AM General LLC v. UUSI, LLC, Case IPR2016-01049, Paper 14 (PTAB November 7, 2016), the PTAB has provided some guidance. On May 18, 2016, Petitioner AM … Continue Reading

Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings

By Jennifer Burnette on Posted in Covered Business Method, Discovery, Inter Partes Review, IPR, Post Grant Review
In its Notice of Proposed Rulemaking published on October 18, 2016, the USPTO proposes to amend the rules of practice before the PTAB to “recognize that, in connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent … Continue Reading

Patent Office Proposes to Increase AIA Trial Fees

By Sandip H. Patel on Posted in Covered Business Method, Inter Partes Review, IPR, Post Grant Review
In the October 3, 2016, Federal Register, the Patent Office published a notice of proposed rulemaking to adjust various fees the Office charges for its services, including 18% to 56% increases for AIA trial fees (as shown below). According to the notice, the Patent Trial and Appeal Board has received more than 4,700 AIA trial … Continue Reading

Federal Circuit Affirms PTAB Upholding Patent Claims

thumbnail image of DNA strandBy William K. Merkel, Ph.D. on Posted in Biotechnology, Inter Partes Review, Post Grant Review, Sections 102/103
In what has been a rare outcome to date, the Federal Circuit in Apotex v. Wyeth, dkt. no. 2015-1871 (Fed. Cir. Aug. 16, 2016) affirmed in a non-precedential decision the PTAB’s final written decision in IPR2014-00115 that the challenged claims were not unpatentably obvious over three references.  At trial, the PTAB found that Apotex did … Continue Reading

Priority Claims Unchallenged In Prosecution Can Be Weak Links

thumbnail image of DNA strandBy William K. Merkel, Ph.D. on Posted in Biotechnology, Inter Partes Review, Post Grant Review
IPR2015-00291 decided a petition filed by Daiichi Sankyo Co. Ltd. against USPN 8,168,181 owned by Alethia Biotherapeutics, Inc.  The ‘181 patent issued from a continuation-in-part of the U.S. national phase of a PCT application and contains claims drawn to methods of impairing osteoclast differentiation, useful in treating various bone diseases.  The Board denied the Patent … Continue Reading

The Three-Front Assault: PeroxyChem Uses IPR, PGR and District Court to Challenge Opponent

By Katherine L. Neville, Ph.D. on Posted in Inter Partes Review, Post Grant Review, Section 101, Section 112, Sections 102/103
In what could become a common patent challenge strategy, PeroxyChem, a chemical company that sells products useful in water and soil remediation, has employed a three-front assault—combining the relatively young post-grant review procedure, with an IPR and litigation–to take on one of its competitors, Innovative Environmental Technologies (IET).  Litigation together with an IPR has become … Continue Reading

“It’s a Bird, It’s a Plane, NO it’s a Granted Motion to Amend.”

By Ryan J. Schermerhorn on Posted in Amendments, Claim Construction, Covered Business Method, Inter Partes Review, Post Grant Review, Sections 102/103
We previously reported the May 9, 2016, Patent Office’s study that the PTAB rarely grants motions to amend.  There, we explained that patent owners rarely file motions to amend and, even when such motions are filed, the PTAB rarely grants such motions. Last week, in Google Inc. and Apple Inc., v. ContentGuard Holdings, Inc., Case … Continue Reading

Status Report on IPR Statistics for the Biotech/Pharma Technology Center

thumbnail image of DNA strandBy Sharon M. Sintich, Ph.D. on Posted in Biotechnology, Inter Partes Review, Post Grant Review
On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided a status report on Inter Partes Review/Post Grant Review in the Biotechnology and Chemical Technology Center 1600 during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference.  The statistics discussed during this BCP Conference are current as of May 31, 2016. … Continue Reading

Trial Verdict Means Time Has Run Out to Get a Stay

By Thomas I. Ross on Posted in Inter Partes Review, Post Grant Review, Stays, Trial Procedures
Federal district courts are inclined to stay patent litigations when requested by patent challengers on the basis that the patent-in-suit is undergoing an AIA review proceeding at the USPTO; and those not so inclined, specifically in the Eastern District of Texas, have been corrected by the Federal Circuit. But this favorable disposition toward stays occurs … Continue Reading

Motion(s) to Amend (Almost Always) Denied!

By Ryan J. Schermerhorn on Posted in Covered Business Method, Inter Partes Review, Post Grant Review, Trial Procedures
Responsive to public interest in whether it is too difficult for Patent Owners to amend claims during PTAB Trials, the Patent Office recently published a study providing aggregate data about motions to amend filed with the PTAB since its inception in 2013.  The study, which was published by PTAB Chief Judge Nathan Kelly in the … Continue Reading

Supporting Evidence, Not Counter-Punching, May Be Needed In An IPR

thumbnail image of DNA strandBy William K. Merkel, Ph.D. on Posted in Biotechnology, Inter Partes Review, Post Grant Review, Sections 102/103
In IPR2015-01537, Momenta petitioned for IPR of claims 1-15 of U.S. Patent No. 8,476,239 owned by Bristol-Myers Squibb (BMS) on grounds of obviousness over three references: Cohen, Shire, and Carpenter.  Petitioner also relied on expert testimony.  The claims recite formulations containing CTLA4Ig, which is a stabilized form of a negative regulator (checkpoint inhibitor) of the … Continue Reading

Patent Applicants Who Appeal Must Wait Their Turn with the PTAB

thumbnail image of DNA strandBy David A. Gass on Posted in Appeals, Biotechnology, Inter Partes Review, Post Grant Review, Section 101
Biotechnology patent applicants dissatisfied with the examination of their patent applications can look to the PTAB for relief by filing an appeal – but they will need to be very, very patient. The procedures created by the America Invents Act (AIA) for challenging U.S. patents – inter partes review, post grant review, and covered business … Continue Reading

PTAB Grants Motion to Amend Claims

By William K. Merkel, Ph.D. on Posted in Amendments, Claim Construction, Inter Partes Review, Post Grant Review, Section 112, Sections 102/103
In IPR2015-00208, Shinn Fu petitioned for IPR of USPN 6,681,897 owned by Tire Hanger.  All five claims of the patent were drawn to methods of supporting vehicle wheels removed from a vehicle while on a service lift, wherein the supports would allow technicians to remove and replace the wheels without risking back injury by bending.  … Continue Reading

Avoid Stumbling Before You Get To The Merits Of A PTAB Appeal

By William K. Merkel, Ph.D. on Posted in Appeals, Post Grant Review, Trial Procedures
In Harmonic Inc. v. Avid Technology, Inc., the Federal Circuit concluded that the PTAB’s practice of denying IPR institution on redundant grounds is appropriate.  The Court’s decision is important because it should counsel prospective petitioners to carefully select grounds on which to petition review and offer an explanation in the petition as to why multiple … Continue Reading

One Post-AIA Claim Risks PGR For All Claims

By Marshall Gerstein on Posted in Institution / Denial, Post Grant Review, Sections 102/103
In its seventh PGR institution, the PTAB recently decided for the first time that a patent asserting a pre-AIA effective filing date was eligible for post-grant review because it contained at least one claim that was only entitled to a post-AIA effective filing date.  Although some claims were entitled to a pre-AIA effective filing date, … Continue Reading

Institution Decisions are Nonappealable. Settled? Maybe Not Yet.

By Marshall Gerstein on Posted in Appeals, Covered Business Method, Institution / Denial, Inter Partes Review, Post Grant Review
The ability to appeal the determination on institution of an IPR is expressly limited by statute. 35 U.S.C. § 314(d) states: “The determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” An identically-phrased limitation is also applicable to PGR institution decisions at 35 U.S.C. § … 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

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

Petitioners Should Heed the PTAB’s Preference for Corroborated Witness Testimony

By Marshall Gerstein on Posted in Post Grant Review
In its third PGR institution decision, the PTAB provided its first guidance regarding witness testimony to support a showing of prior public use or sale in PGRs.  The decision is a cautionary tale that the PTAB strongly prefers corroboration of witness testimony, much like the corroboration required during interference proceedings.  This is not a surprise, … Continue Reading

Put Away The Blunderbuss – Attention to Detail and Thoroughness Are Needed in Preparing an IPR Petition

By William K. Merkel, Ph.D. on Posted in IPR, Post Grant Review, PTAB
Boehringer Ingelheim filed three petitions attacking patents generally drawn to methods of treating RA patients with rituximab.  The decisions on two of those petitions, i.e., IPR2015-00415 and IPR2015-00417, have been addressed elsewhere.  In IPR2015-00418, the PTAB declined to institute an IPR on the petition’s challenges to the lone claim of U.S. Patent No. 8,329,172, drawn … Continue Reading

Gamble At Your Own Risk – The Danger Of Petition Overkill

thumbnail image of DNA strandBy William K. Merkel, Ph.D. on Posted in Biotechnology, Claim Construction, Institution / Denial, Inter Partes Review, Post Grant Review, Sections 102/103
Boehringer Ingelheim filed the petition at issue in IPR2015-00417 concurrently with the petitions at issue in IPR2015-00415 and IPR2015-00418 to challenge patents protecting methodologies for treating rheumatoid arthritis (RA) with rituximab, an FDA-approved antibody for treating certain cancers.  The IPR2015-00417 petition specifically challenged the fourteen claims of U.S. Patent No. 7,976,838, which are drawn to … Continue Reading

Grinning Patentees Get A Mulligan

thumbnail image of DNA strandBy William K. Merkel, Ph.D. on Posted in Biotechnology, Institution / Denial, Inter Partes Review, Post Grant Review, Sections 102/103
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 … Continue Reading
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