There have been a few short articles floating around over the past few years that list the top (usually four or five) mistakes that petitioners have made to doom their IPR/CBM petitions. These articles sometimes refer to the need for the petitioner to pay attention to detail, but then often fail to go into detail about what those details might be.
Continue Reading Failure To Identify The Difference Makes A Difference
District Court Interprets IPR Estoppel Provision to Permit Reliance
In what appears to be the first district court case to address the issue directly, Judge Lefkow of the United States District Court for the Northern District of Illinois held that 35 U.S.C. § 315(e)(2) estoppel does not preclude parties from raising grounds in a civil litigation that were cumulative of grounds that could have been asserted during that party’s prior IPR proceeding, so long as the grounds are based on prior art that was not reasonably available during the IPR.
Continue Reading District Court Interprets IPR Estoppel Provision to Permit Reliance
A Second Bite at the Apple? Kyle Bass’s CFAD is Awarded IPR Institution of Follow-on Petitions
Remember when the PTAB denied institution of two IPR petitions filed by Kyle Bass’s Coalition for Affordable Drugs V LLC’s (CFAD) against Acorda Therapeutics, Inc. (Acorda)? Well, if at first you don’t succeed, try citing different prior art!
Continue Reading A Second Bite at the Apple? Kyle Bass’s CFAD is Awarded IPR Institution of Follow-on Petitions
PTAB Revises Claim Construction in Final Written Decision, But Still Finds Claims Invalid
On January 11, 2016, the PTAB issued a final written decision in ABS Global, Inc. et al. v. XY, LLC, IPR2014-01161, holding claims 1 and 3 of U.S Patent No. 7,195,920 invalid for obviousness. The IPR is part of a long-running dispute between the parties involving multiple issues and multiple patents, as reported previously.
Continue Reading PTAB Revises Claim Construction in Final Written Decision, But Still Finds Claims Invalid
House of Cards: Weak Evidentiary Support Dooms IPR of Med Device Patent
On February 9, 2016, in C.R. Bard, Inc. v. Medical Components, Inc., IPR2015-01660, the PTAB refused to institute an IPR against US Patent No. 8,257,325, “Venous Access Port with Molded and/or Radiopaque Indicia.” The challenged claims were directed to a venous access port assembly with a marking to indicate the port is rated for power injection of a contrast fluid, which marking is visible by X-ray examination when the port is implanted.
Continue Reading House of Cards: Weak Evidentiary Support Dooms IPR of Med Device Patent
Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims
Update: Overruled in part by Aqua Products, Inc. v. Matal.
In Nike, Inc. v. Adidas AG, Case No. 2014-1719 (Fed. Cir. Feb. 11, 2016) (appeal of IPR2013-00067), the Federal Circuit provided further guidance on the PTAB’s administrative procedures regarding motions to amend claims. After considering Nike’s argument that 35 U.S.C. § 316(e) places the burden of proving unpatentability on the petitioner in an IPR, the court reaffirmed its decision in Microsoft v. Proxyconn that the Patent Office has appropriately placed the burden on the patent owner to show patentability of substitute claims.
Continue Reading Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims
PTAB Reminds Petitioners That Conclusions in Expert Declarations Must be Supported by Explanations
On January 19, 2016, the PTAB denied Coalition for Affordable Drugs V LLC’s (CFAD) request for rehearing following the Board’s decision denying institution of IPR. In IPR2015-01086, CFAD filed a petition requesting an IPR of claims 1–13 in Biogen International GmbH’s (Biogen) U.S. Patent No. 8,759,393. The Board denied the petition and CFAD filed a request for rehearing on the (same) grounds of anticipation and obviousness. As discussed below, the denial of the rehearing highlights the importance of supporting all conclusions in an expert declaration with reasoned explanations.
Continue Reading PTAB Reminds Petitioners That Conclusions in Expert Declarations Must be Supported by Explanations
One Post-AIA Claim Risks PGR For All Claims
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, PGR was instituted for all of the patent claims, on all five of the prior art grounds asserted by the petitioner.
Continue Reading One Post-AIA Claim Risks PGR For All Claims
Dissent: “Deferential review by the Federal Circuit falls short”
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. However, in dissent, Judge Newman asserted that the Federal Circuit’s substantial evidence standard of review for the Board’s factual findings in AIA trial decisions is not appropriate under the AIA, and that based on a review without deference, the Board’s decision in this case should be reversed.
Continue Reading Dissent: “Deferential review by the Federal Circuit falls short”
Federal Circuit Tells Patent Owners That They Can’t Get It If They Don’t Ask For It
If you’re a patent owner faced with an expert declaration submitted by an IPR petitioner on reply, try to respond, and in multiple ways. Don’t just complain that the declaration should be excluded. This was the Federal Circuit’s recent message in Belden Inc. v. Berk-Tek LLC.
Continue Reading Federal Circuit Tells Patent Owners That They Can’t Get It If They Don’t Ask For It