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 in B.R.A.H.M.S. Gmbh v. Becton, Dickinson & Co., PGR2016-00018.

The petitioner requested PGR of claims 1-12 of U.S. Patent No. 9,091,698, directed to a method for the advanced detection of sepsis in a systemic inflammatory response syndrome (SIRS)-positive subject involving measuring procalcitonin levels and one or more clinical markers over multiple time points, wherein an increase in the amount of procalcitonin from a previous amount over a 24-hour interval detects sepsis. 
Continue Reading PTAB Institutes Third Biotech/Pharma Post-Grant Review

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An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

The Federal Circuit recently denied a petition for rehearing en banc, effectively reiterating that the PTAB may, in its sole discretion, choose to institute an IPR proceeding on some, but not all, of the patent claims challenged in an IPR petition.  The rehearing petition sought the full court’s review of a split three-judge panel decision in SAS Institute, Inc. v. Complementsoft, LLC, Nos. 2015-1346, -1347 (Fed. Cir. Jun. 10, 2016), that applied Synopsys, Inc. v. Mentor Graphics Corp., 814 F.3d 1309 (Fed. Cir. 2016), to conclude that there is no statutory requirement that a PTAB final written decision address every claim raised in an IPR petition.
Continue Reading PTAB May Institute an IPR Proceeding on a Subset of Challenged Claims

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A split panel of the Federal Circuit held that the PTAB applied a standard that was too exacting when it required an inventor to prove the “continuous exercise of reasonable diligence” to antedate a prior art reference. Rather, the PTAB should have applied the rule of reason to determine if the inventor proved that there was “reasonably continuous diligence.” Perfect Surgical Techniques v. Olympus America, Inc., Case No. 2015-2043, __ F.3d __ (Fed. Cir. Nov. 15, 2016). This clarified standard appears to ease the burden on a party seeking to prove diligence.
Continue Reading To Antedate, Must an Inventor Prove “Continuous Reasonable Diligence” or “Reasonably Continuous Diligence”?

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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 O.B.A. Adebimpe v. Doang-Trang T. Vu & The Johns Hopkins Univ., Case PGR2016-00020, Paper No. 14 (P.T.A.B. July 25, 2016).
Continue Reading Post-Filing Claim Amendments Don’t Change the Effective Filing Date for Post Grant Review

In two final written decisions (IPR2015-01093 and IPR2015-00990), the PTAB found that challenged claims in Shire’s U.S. Patent No. 7,056,886 (the ’886 patent) were invalid as obvious.  The decisions highlight potential issues related to patents directed to pharmaceutical formulations that petitioners and patent owners alike may want to consider if confronted with an IPR related to such subject matter.

The Coalition for Affordable Drugs filed two petitions for IPR, one challenging claims 1−45 of U.S. Patent No. 7,056,886 (IPR2015-01093) and one challenging claims 46−52 and 61−75 of the ’886 patent (IPR2015-00990). 
Continue Reading PTAB Cancels Gattax® Patent Claims in Coalition for Affordable Drugs IPRs

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In Unwired Planet, LLC v. Google Inc., the Federal Circuit vacated the PTAB’s final decision in a CBM review because the PTAB had applied an overly broad standard to determine that the challenged claims were directed to a “financial product or service” subject to CBM review, and remanded the case for evaluation under the proper standard.

Google had filed a petition for CBM review of Unwired’s patent entitled “Method and System for Managing Location Information for Wireless Communications,” and in particular, claims directed to methods of limiting access to location information for wireless communication devices. According to Google, the patent is eligible for CBM review, and it notes that the specification discusses using the claimed methods to facilitate advertising, which would facilitate financial activity.
Continue Reading Federal Circuit Limits Scope of CBM Reviews

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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 General LLC filed a Petition requesting inter partes review of various claims of U.S. Patent No. 5,570,666 (“the ‘666 Patent”).  In its Preliminary Response to the Petition, filed on August 19, 2016, the Patent Owner, UUSI, LLC, urged denial of the Petition, contending the petition was time barred. 
Continue Reading Petitioner Not Time-Barred By Service of COFC Complaint

In IPR2015-01191, American MegaTrends and four other petitioners challenged claims 1-9, 11, 12 and 15 of USPN 6,892,304 owned by Kinglite Holdings, Inc. on grounds of obviousness over three technical documents, supplemented by a fourth document for the challenge to claim 6.  The parties also indicated that they were involved in 11 other IPR petitions and two district court proceedings.

The technology disclosed and claimed in the ‘304 patent involved methods of encrypting instructions to the Basic Input-Output System (BIOS) of a computer operating system using a private-public key pair.
Continue Reading It Isn’t Printed Publication Art Unless It’s Publicly Accessible

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In Schoeller Bleckmann Oilfield v. Churchill Drilling Tools U.S., No. 2016-1494 (Fed. Cir. November 9, 2016) (non-prec.), the court affirmed the Board’s IPR decision of unpatentability of claims directed to oil-drilling equipment.  The court refused to construe the challenged claims as limited to a disclosed embodiment, rejecting the patentee’s argument that the claim term “ball-like” was given an implicit definition in the specification.
Continue Reading Federal Circuit Affirms Board’s Decision Cancelling Claims for Oil Drilling Equipment Based on Broad Claim Construction

Heads or TailsAs a standard of appellate review, “substantial evidence” is not peculiar to the Federal Circuit’s review of patent decisions from district courts and the Patent Office. All circuit courts are familiar with that review standard. They apply it routinely in deciding appeals. The standard originated with appeals of jury verdicts, in recognition of the role of credibility at trial. Under this standard, a judge determines not whether a jury’s decision was correctly made, but whether its decision could reasonably have been made based on the evidence it received. Recent opinions make apparent, however, that the Federal Circuit judges are divided and disagree on how to apply that standard.
Continue Reading The Federal Circuit’s Disagreement About What Constitutes “Substantial Evidence”

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.