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

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 JustificationIn 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 Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being obvious over prior art.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

Cancelled in RedOn 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

combustion fumes coming out of car exhaust pipe as concept of damage in the climate change and global warming

In EmeraChem Holdings, LLC v. Volkswagen Group of American, Inc. (Fed. Cir. June 15, 2017), the Federal Circuit determined that the Patent Owner’s uncorroborated declaration was insufficient to show that asserted prior art under pre-AIA 35 U.S.C. § 102(e) represented the work of the same inventive entity as the challenged claims, and with respect to certain claims the PTAB failed to provide sufficient notice and opportunity to respond. Accordingly, the court affirmed in part and vacated in part the PTAB’s decision that the challenged claims were unpatentable for obviousness.Continue Reading Uncorroborated Declaration Not Sufficient to Avoid § 102(e) Prior Art

Illustration and Painting

Third parties seeking to challenge pre-AIA patents in the USPTO often choose between IPR and ex parte reexamination.  In some cases, petitioners pursue both proceedings, sequentially or in parallel, taking advantage of different timelines to completion, different standards for institution, and using insights gained in one proceeding in the other.  The PTAB recently exercised its discretion to terminate three reexaminations filed against patents also challenged by IPR in Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, Paper 81 (May 24, 2016).  In the pending appeal, the stage is set for the Federal Circuit to consider the extent of the PTAB’s discretion in terminating post-grant proceedings in these circumstances.  Case Nos. 2016-2388, 2017-1020 (Fed. Cir.).
Continue Reading PTAB Exercised Discretion to Terminate Ex Parte Reexaminations in Ariosa v. Illumina; CAFC to Review

Merging concept illustrated by two different jigsaw piece a silver and a gold one.

Teva Pharmaceuticals USA, Inc. (“Teva”) filed a Petition, seeking an IPR of claims 1–20 of Allergan’s U.S. Patent No. 8,642,556. [IPR2017-00579, Paper No. 9]  Along with the Petition, Teva filed a Motion for Joinder to join Mylan Pharmaceuticals Inc. v. Allergan, Inc., IPR2016-01129.  This blog has previously reported on the topic of joinder in IPR Petitions here and here.

Teva’s Petition was not timely, having been filed more than one year after Allergan filed a complaint alleging infringement of the ‘556 patent against Teva.  Teva’s Motion for Joinder, however, was filed within one month of the date that the Board instituted review in response to Mylan’s Petition.  Under 37 C.F.R. § 42.122(b), Teva’s Motion for Joinder with Mylan’s Petition was timely.
Continue Reading One-Year Time Bar Does Not Apply to a Request for Joinder of IPR Proceedings

Front facade of the US Supreme Court building in Washington DC. Words "EQUAL JUSTICE UNDER LAW" are clearly visible right above the columns. Vivid blue sky with clouds is in background.

An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional

The Supreme Court issued an order on June 12, 2017, indicating it will review the Federal Circuit’s judgment in Oil States Energy Services, LLC v. Green’s Energy Group, LLC, 639 Fed. Appx. 639 (Fed. Cir. 2016) (link).  The petition presented three questions, of which the Court will address only one:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
Continue Reading Supreme Court to Decide Whether IPRs Violate Article III and the Seventh Amendment

Man under stress because of too much problems. Abstract image with a wooden puppet

In Fairchild (Taiwan) Corp. v. Power Integrations, Inc., Appeal 2017-1002 (Fed. Cir. Apr. 21, 2017), the Federal Circuit determined that no inter partes reexamination proceeding can be brought or maintained on issues that a party raised or could have raised in a since-concluded civil action. Specifically, once the court issues a final judgment in the civil action that the party has not sustained its burden of proving the invalidity of the patent claim, the party may neither initiate nor maintain a challenge to the patent claim in an inter partes reexamination. The decision is an interesting contrast to the decision in Novartis AG v. Noven Pharmaceuticals Inc. where the Federal Circuit affirmed the PTAB’s inter partes review decisions finding obvious certain patents that were previously found nonobvious in district court. The contrast is grounded in differences in the statutory estoppel provisions that apply to the different proceedings.Continue Reading Different Invalidity Conclusions by PTAB and Federal Courts Prohibited

Conceptual road sign on decision making

When the America Invents Act was enacted, one of the biggest questions facing petitioners was the scope of the estoppel set forth in 35 U.S.C. § 315(e). While IPR was expected to provide a cheaper, more efficient method of challenging the validity of a patent, what would the challenger be giving up?

The statute provides that for any patent claim addressed in a final written IPR decision the petitioner (or real party in interest), may not request, maintain, or assert that any such claim is invalid on a ground that the petitioner “raised or reasonably could have raised” during the IPR in any proceeding before the patent office, or in any action in the district courts or the ITC. 35 U.S.C. § 315(e). The legislative history of the statute suggests that Congress intended a broad application of estoppel. See, e.g., 157 Cong. Rec. S1375, 1358 (Daily Ed. March 8, 2011) (Statement of Senator Grassley) (indicating that inter partes review “will completely substitute for at least the patents-and-printed publications portion of the civil litigation”).Continue Reading AIA Estoppel – 7 Things We Know So Far

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.