Warning road sign "U turn". Digitally generated 3d image.

The PTAB is not often persuaded by objective evidence of non-obviousness, i.e., secondary considerations, when the scope and content of the prior art includes all of the features recited in the claims. However, a pair of recent PTAB decisions, Innopharma Licensing, Inc. v. Senju Pharmaceutical Co., LTD., IPR2015-00902, Paper 90, and IPR2015-00903, Paper 82 (PTAB July 28, 2016), provides a rare example where the PTAB completely changed its mind after instituting the IPRs. The decisions offer the same message, and this post focuses on the decision in IPR2015-00902, where the PTAB found all of the challenged claims of U.S. Patent No. 8,669,290 not obvious over the applied prior art references based on the objective evidence of non-obviousness.
Continue Reading Secondary Considerations Change Panel’s Mind after Institution

In two recent PTAB decisions, Tissue Transplant Technology Ltd. & Human Biologics of Texas, Ltd., v. Mimedx Group, Inc., Case IPR2015-00420, Paper 25 (PTAB July 7, 2016) and Dexcowin Global, Inc., v. Aribex, Inc. Case IPR2016-00440, Paper 13 (PTAB July 7, 2016), the Board reached opposite conclusions regarding whether the petitioner’s prior art was analogous to the challenged patents.  It is well established that art is analogous when it is: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the particular problem faced by the inventor, if the art is not from the same field of endeavor. In re Bigio, 381 F.3d 1320, 1325-1326 (Fed. Cir. 2004). However, as these two decisions demonstrate, overcoming a non-analogous art challenge depends on how the petitioner characterizes the problem to be solved by the challenged claims and whether the petitioner can point to some area of overlap in the fields of endeavor of the prior art reference and the patented invention.
Continue Reading Analogous Art: A Tale of Two Decisions

United States Constitution and gavel with brass ring.

Two petitions for certiorari are pending before the Supreme Court in which the aggrieved patent owners in MCM Portfolio LLC. v. Hewlett-Packard Co. and Cooper v. Lee are challenging the constitutionality of AIA trials.  The Federal Circuit in MCM Portfolio upheld the PTAB’s authority to adjudicate the validity of issued patents, determining that IPR proceedings are not unconstitutional under Article III or the Seventh Amendment right to a jury trial.  MCM Portfolio LLC. v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015).  In Cooper, the district court granted summary judgment against Cooper on administrative exhaustion grounds and the Federal Circuit summarily affirmed. Cooper v. Lee, 86 F.Supp.3d 480 (2015);  Cooper v. Lee, Nos. 2015-1483, 2016-1071 (Fed. Cir. 2016).  The Government filed briefs in opposition to both petitions – the Cooper opposition brief was filed in April, and the MCM opposition brief was filed in June.  A decision on the petitions is expected at the beginning of the Supreme Court’s October 2016 term.
Continue Reading Government Weighs in on Constitutionality of Inter Partes Review

Oil pumper backlit in Oklahoma

In In Re Magnum Oil Tools International Ltd., the Federal Circuit reversed the PTAB’s final decision cancelling challenged claims for obviousness because the record did not include substantial evidence of a motivation to combine references, and because the PTAB improperly shifted the burden of proof on this issue to the patent owner.

Petitioner McClinton Energy Group filed an IPR petition challenging claims of a patent relating to technology for “fracking” (oil drilling using hydraulic fracturing). In fracking, a wellbore is drilled into the earth, and a fluid mixture is injected into the wellbore. Downhole plugs are used to divide the wellbore into separate sections so that different sections of the wellbore may be fracked at different times.
Continue Reading PTAB Improperly Shifted Burden of Proof in IPR

A handing to help their partner in mountains.

In a bit of “inside baseball,” the PTAB recently clarified the difference between supplemental evidence and supplemental information.  Practitioners would do well to give careful attention to this distinction.  The difference can have profound consequences to an IPR Petitioner.

In Generico LLC v. Dr. Falk Pharma GmbH, IPR2016-00297, Paper No. 15 (July 15, 2016), the PTAB entered an order regarding the conduct of proceedings.  The order addressed the Petitioner’s request to file a motion to supplement information pursuant to 37 C.F.R. §42.123.  The Petitioner sought to file information in response to objections the Patent Owner made to evidence submitted by Petitioner.  Specifically, the Patent Owner had objected that Petitioner’s prior art references would not have been relied upon by a person of ordinary skill in the art, and that the Petitioner’s declarant was not qualified to speak to the views of a person of ordinary skill in the art.  To address these objections, the Petitioner sought the PTAB’s authorization to file a supplemental declaration and documents from a parallel district court litigation.
Continue Reading Advise Petitioner to File Supplemental Evidence Instead Of Information

A breaking chain link can symbolise failure or success. It?s a strong image expressing the famous weakest chain link, breaking free from a bad habit or finally succeeding / failing in a project.

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 Owner’s priority claim and found an attempt to antedate intervening art inadequate, leading to a holding that the ‘181 claims were unpatentable under 35 U.S.C. § 102(a).  The decision illustrates the potential of intervening art not considered during prosecution and also illustrates the shifting legal view of the patentability of antibody-based technologies.
Continue Reading Priority Claims Unchallenged In Prosecution Can Be Weak Links

Pills flowing out of a bottle of prescription medicine with information of their possible serious side effects.

The PTAB recently addressed the limits on strategies to patent drug labeling, canceling claims directed to a method of supplying a pharmaceutical product where the method includes a step of providing certain “information” to the medical provider. According to the PTAB, the claimed step of providing the information is entitled to no patentable weight under the “printed matter” doctrine where it is not functionally related to other elements of the claimed method.  Specifically, even if the claim says that the information is “sufficient to” cause some effect (e.g., for a medical provider to avoid treating a patient) there is no functional relationship with the claim if the claim doesn’t recite that effect.   Praxair Distribution Inc. v. Mallinckrodt Hospital Prods. IP Ltd., IPR2015-00529.
Continue Reading “Providing . . . information” Step Given No Patentable Weight

Little boy trying to reach the sky. Sunset scenery.

The prevailing party in a PTAB proceeding cannot appeal the claim construction used. In SkyHawke Tech. LLC v. Deca Int’l Corp., Appeal Nos. 2016-1325 and 2016-1326, Patent Owner SkyHawke prevailed in an inter partes reexamination filed by Deca challenging claims of SkyHawke’s U.S. Patent No. 7,118,498.  Unsatisfied with the PTAB’s claim construction used in reaching that decision, SkyHawke appealed to the Federal Circuit requesting “[c]orrection of the PTAB’s claim construction and affirmance of the ultimate decision.”  (p. 2).
Continue Reading Federal Circuit Confirms Prevailing Party Cannot Appeal to Correct PTAB’s Claim Construction

Victory comes if you are lucky on dices

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 a rather common means to challenge a competitor’s patent. However, post grant review is gaining in popularity among litigants, adding to the available strategies of overcoming potential barriers to market entry for companies.  For example, while 12 Petitions for PGR were filed in all of 2015, 15 have been filed so far in the first half of 2016. 
Continue Reading The Three-Front Assault: PeroxyChem Uses IPR, PGR and District Court to Challenge Opponent

Funny vintage detective looking through a magnifier

This blog has previously explained on July 23, 2015, December 10, 2015, and December 16, 2015 why it is important for parties to AIA trials to carefully consider the patent prosecution history.  Under 35 U.S.C. § 325(d), the Board has discretion to deny an AIA trial if “the same or substantially the same prior art or arguments previously were presented to the Office.”  The Board recently exercised that discretion in denying an inter partes review petition and, in doing so, provided yet another warning to petitioners: do not waste the Board’s time presenting in a petition prior art and arguments that were already considered during prosecution, and be sure to address deficiencies in prior art combinations the patentee overcame during prosecution.  Drug Prices for Consumers,  LLC v. Forest Labs. Holdings Ltd., Case IPR2016-00379, Paper 14 (PTAB July 1, 2016).
Continue Reading Been There, Done That: Petitioners Should Find Art and Arguments Not Previously Considered During Prosecution

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.