When a patent is co-owned by a state university and another party, an IPR may proceed against the remaining party even after the state university co-owner has been determined to have sovereign immunity from the proceeding. Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., [Case No. IPR2017-00572, Paper 32 (July 13, 2017)]. This recent decision was the first to address a situation where a university owned a patent jointly with a company. This decision follows two earlier cases, Covidien v. University of Florida , discussed here, and NeoChord, Inc. v. University of Maryland, Baltimore, [Case No. IPR2016-00208, Paper 28 (PTAB, May 23, 2017)], where the Board determined that sovereign immunity under the Eleventh Amendment as an “arm of the state” prevents an IPR from being instituted regarding patents owned by state universities.
Continue Reading IPR Challenge May Proceed Even in the Absence of Some Patent Owners
PTAB Correctly Construed “Said” and Canceled Claims—but Was the Patent CBM Eligible?
In a CBM appeal, TransPerfect Global, Inc. v. Matal, No. 2016-1121 (Fed. Cir. July 12, 2017) (non-prec.), the Federal Circuit determined that the PTAB correctly construed the word “said” in the claim term “said hyperlink,” and determined that TransPerfect’s challenged claims were unpatentable for lack of written description. The court’s claim construction analysis is thorough and well supported, but the treatment of the challenged patent as CBM-eligible appears to be inconsistent with Federal Circuit precedent.
Continue Reading PTAB Correctly Construed “Said” and Canceled Claims—but Was the Patent CBM Eligible?
Eli Lilly Successfully Challenges U Penn Erbitux® Claims at PTAB, Derailing Infringement Suit
The PTAB recently canceled the University of Pennsylvania’s U.S. Patent No. 7,625,558, a potentially fatal blow to the University’s suit against Eli Lilly and Company alleging its cancer therapeutic Erbitux® (centuximab) infringes the patent. Eli Lilly and Co. v. Trustees of the Univ. of Penn., Case IPR2016-00458 (July 13, 2017). The PTAB’s decision resolved testimony from the parties’ competing expert witnesses in favor of the Petitioner (Eli Lilly and Company), thus highlighting how the PTAB’s scientific acumen can be leveraged to effectively short-circuit an otherwise expensive and time-consuming lawsuit.
Continue Reading Eli Lilly Successfully Challenges U Penn Erbitux® Claims at PTAB, Derailing Infringement Suit
Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings
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 proceedings at the PTAB. Enactment of this Act would severely diminish the usefulness of AIA proceedings.
Continue Reading Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings
Attorney Argument Doesn’t Provide Substantial Evidence To Support PTAB
In Google Inc. v. Intellectual Ventures II LLC, Appeal 2016-1543, 2016-1545 (Fed. Cir. July 10, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling some claims of U.S. Patent No. 6,121,960, but vacated the portion of the decision that refused to cancel other claims. With respect to the upheld claims, the court remanded the matter because the PTAB failed to adequately explain its findings, noting that the PTAB’s “disagreement with [the petitioner] … does not amount to a satisfactory explanation for its finding” that those claims are not unpatentable. Google at 12.
Continue Reading Attorney Argument Doesn’t Provide Substantial Evidence To Support PTAB
Pay-Per-Click Patent Found Ineligible Under Section 101
In a final written decision issued on April 24, 2017, the PTAB canceled all four challenged claims of U.S. Patent No. 8,671,057, directed to detecting invalid and fraudulent clicks in pay-per-click web advertising (Google Inc. v. Zuili, CBM2016-00008 (Paper 56)). The PTAB found all four claims unpatentable under 35 U.S.C § 101, and obvious under 35 U.S.C. § 103 over a combination two prior art documents related to a study on online advertising reporting and auditing.
Continue Reading Pay-Per-Click Patent Found Ineligible Under Section 101
Reluctant to Reverse, the Federal Circuit Offers the PTAB a Mulligan
The Federal Circuit recently vacated the PTAB’s decisions in three interferences. Board of Trustees of Leland Stanford Jr. Univ. v. Chinese Univ. of Hong Kong, Appeal 2015-2011 (Fed. Cir. June 27, 2017). These interferences concern which parties’ inventors first conceived methods for diagnosing fetal aneuploidies using cell-free fetal DNA from maternal blood samples. The PTAB concluded that two patents it issued to Stanford’s inventors and their pending application lacked an adequate description of the interfering invention and, thus, entered judgment against Stanford. The Federal Circuit determined, however, that the PTAB failed to properly assess the description in Stanford’s patents and application and, thus, vacated the PTAB’s decisions. The court’s disposition is an example of how even a fact-intensive inquiry, reviewed on appeal with substantial deference, can be shown to have been misguided, leading to an appellant’s success.
Continue Reading Reluctant to Reverse, the Federal Circuit Offers the PTAB a Mulligan
Look to the Claims for Estoppel
In three recent decisions, the Federal Circuit reiterated the importance of determining estoppel in PTAB proceedings on a claim-by-claim basis.
In the earlier related decisions, In re Affinity Labs of Texas, LLC [1] , 856 F.3d 883 (Fed. Cir. 2017) and In re Affinity Labs of Texas, LLC [2], 856 F.3d 902 (Fed. Cir. 2017), the court addressed the effects of a district court judgment and settlement of a district court litigation on pending pre-AIA reexamination proceedings.
Continue Reading Look to the Claims for Estoppel
PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification
In In re Schweickert, No. 2016-1266 (Fed. Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being obvious over prior art. The Federal Circuit determined that the PTAB’s conclusion of obviousness was based on no more than a broadly-stated assertion that the proposed modification was within the knowledge of a person having ordinary skill in the art. The PTAB’s decision, according to the court, lacked a sufficient factual basis for why the skilled artisan would have modified the prior art to arrive at the claimed invention—a fact needed to support a conclusion of obviousness.
Continue Reading PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification
Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPR
On June 7, 2017, the PTAB issued a final written decision in IPR 2016-00254 canceling claims in a Fresenius Kabi USA, LLC (Fresenius) patent covering Diprivan®. The PTAB instituted the IPR in response to a petition filed by hedge fund manager Kyle Bass and his colleague Erich Spangenberg. Diprivan® is the commercial name for propofol, an intravenous anesthetic agent used during surgery and other medical procedures.Continue Reading Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPR