Short of invalidating a patent, can the outcome of IPR dictate the outcome of a district court case? The interplay between PTAB and district courts remains uncertain. As we’ve previously reported here and here, sometimes district courts give weight to PTAB decisions, and sometimes they don’t.
Continue Reading Denial of IPR Institution Doesn’t Make Invalidity Case Unreasonable
Split PTAB Ruling Allows Parties to Join Their Own Petitions
An expanded, split panel of the PTAB recently decided that it may be appropriate to join the same party’s serially-filed IPR petitions into a single proceeding, even when one such petition would otherwise be time-barred but for the joinder. Zhongshan Broad Ocean Motor Co., Ltd. v. Nidec Motor Corp., IPR2015-00762, Paper 16 (PTAB Oct. 5, 2015). The decision offers guidance on situations where the PTAB may exercise discretion in consolidating proceedings involving the same petitioner, and broadly interprets the statute to permit joinder of the same parties and issues.
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Decisions in Deere & Company v. Gramm provide tips for petitions
The Board’s decisions instituting inter partes review on several grounds in two petitions filed by Deere & Company provide guidance on possible ways to organize an IPR petition and identify grounds for review. Deere filed two petitions (IPR2015-00898 and -00899) against U.S. Patent No. 6,202,395 (Gramm) asserting parallel challenges based on slightly different groupings of prior art. The Patent Trial and Appeal Board instituted trial on both, offering four observations that may be helpful when preparing an IPR petition.
Continue Reading Decisions in Deere & Company v. Gramm provide tips for petitions
How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings
Recently, in the pages of this blog, we reported on the dire predictions made at the IPO Annual Meeting here in Chicago of the “end of days” for patents. 
The purported culprits? The PTAB and the America Invents Act’s newly enacted Inter Partes Review and Covered Business Method Review. “Well, allow me to retort,” to borrow a line from Samuel L. Jackson’s character in Pulp Fiction.
Continue Reading How I Learned to Stop Worrying and Love the Bomb: Response to IPO Panel on PTAB Proceedings
APJs Dispute Requirements for a Reference to Qualify as a Printed Publication
Final written decisions, IPR2014-00781, IPR2014-01086, IPR2014-00821, IPR2004-00580, IPR2014-00802, for IPRs of several patents owned by Zond, LLC, which include rare dissenting opinions, illustrate different views of APJs concerning the requirements for establishing that a reference is a printed publication under 35 U.S.C. § 102(b). These decisions provide helpful guidance on how to address references whose status as a printed publication may be in dispute.
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IPR Institution Decision Precluded as Evidence in Litigation, Again
No precedential Federal Circuit decision addresses the effect of an IPR institution decision on parallel litigation tried 
before a jury. As a result, some district courts have allowed IPR institution decisions regarding a patent-in-suit to be presented as evidence in a pending litigation (see Evidence of Denial of IPR Institution Allowed in District Court Infringement Action), while many have not.
Continue Reading IPR Institution Decision Precluded as Evidence in Litigation, Again
PTAB Dismisses Biosimilar Company’s IPR Petition Without Prejudice, When Petitioner Loses its Expert
The PTAB recently granted Celltrion’s motion to dismiss its IPRs without prejudice, after Celltrion suddenly lost its ability to rely on a key expert declaration. Celltrion had filed IPR petitions against two patents covering use of Rituxan®, and had sought joinder with pending IPRs filed by Boehringer Ingelheim (BI) against the same patents. Although Celltrion initially had permission to rely on testimony of BI’s expert, that permission was withdrawn after BI unilaterally requested adverse judgment in its IPRs. Left out in the cold, Celltrion requested dismissal without prejudice, to permit it to re-file its petitions with a new expert. The PTAB granted the request.
Continue Reading PTAB Dismisses Biosimilar Company’s IPR Petition Without Prejudice, When Petitioner Loses its Expert
PTO Requests Congress Change AIA Proceedings
As required by the Leahy-Smith America Invents Act, the PTO issued a report to Congress in September summarizing implementation of the AIA in the four years since the Act went into effect. The report proposes recommended changes to the law that the PTO would like to see enacted. A full copy of the report is available here.Continue Reading PTO Requests Congress Change AIA Proceedings
Hedge Funds Free to Heckle Without Risk of Sanctions
Hedge funds and their affiliates are now free to heckle patent owners with IPR petitions, regardless of their admitted “profit motive.” On September 25, 2015, an expanded six-judge panel of the PTAB denied Celgene’s Motion for Sanctions against the Coalition For Affordable Drugs (CFAD). Celgene had requested dismissal of five IPR petitions filed by CFAD because the petitions represent a misuse of inter partes reviews as an investment strategy and were “an ongoing abuse of the inter partes review process that will be an unwarranted burden on the Board, and innovators like Patent Owner.”
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Pharma industry continues efforts to exempt patents from IPR
The pharmaceutical industry continues its efforts to exempt pharmaceutical and biotechnology patents from inter partes review
(IPR). Neither the House’s Innovation Act nor the Senate’s PATENT Act currently contain any provisions that would exempt particular patents from these proceedings. But as we reported in June, some members of the Senate judiciary committee appear sympathetic to addressing the pharmaceutical industry’s concerns with an exemption for pharmaceutical and biotechnology patents.
Continue Reading Pharma industry continues efforts to exempt patents from IPR