As the patent community anxiously awaits the PTAB’s decision concerning whether the Coalition For Affordable Drugs (CFAD) should be sanctioned for filing an IPR petition against a Celgene patent¹, the PTAB recently denied institution of two IPR petitions² the CFAD filed concerning two Acorda patents that cover Ampyra, a billion-dollar drug for treating multiple sclerosis. The CFAD is a wholly owned subsidiary of a hedge fund managed by Kyle Bass and, since February 2015, Bass and the CFAD have filed twenty nine IPR petitions against more than twenty patents different patents belonging to at least fifteen different companies.
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USPTO Proposes Single APJ Pilot Program for IPR Institution
Citing an interest in improving efficiency, the USPTO published a request for comments on a proposed pilot program that would change the way Inter Partes Review petitions are decided. 
Currently, a panel of three administrative patent judges (APJs) consider IPR petitions and determine whether to institute and conduct a trial. The trial is then conducted before the same panel of APJs, which issues a final written decision on the merits.
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Federal Circuit Affirms Seven CBM Decisions
In a non-precedential decision issued on August 24, 2015, the Federal Circuit affirmed the final decisions of the PTAB in seven overlapping covered business method patent reviews. In those reviews, Liberty Mutual Insurance Company challenged claims in five patents owned by Progressive Casualty Insurance Company, all directed to pricing automobile insurance based on vehicle use or online adjustment of insurance policies. In the Federal Circuit’s decision—its second addressing the merits of a CBM review—the court affirmed the PTAB’s decisions that certain claims were anticipated and others were obvious, and addressed several issues.
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AIA Rule Changes About Patent Owner Responses and Misconduct
On August 20, the USPTO published for comment in the Federal Register proposed changes to the rules governing PTAB trials. In general, the proposed amendments address the claim construction standard applied by the Board, evidence that may be included in the patent owner’s response, and a Rule 11-like misconduct standard for practitioners before the PTAB.
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Suppliers Can Lack Standing to Seek CBM Review on Behalf of Customers
In several recent decisions, the PTAB has clarified the standing required to file petitions seeking Covered Business Method review. Under the AIA, standing to seek Covered Business Method review is limited to those charged with infringement and their “privies.” “Privies,” however, do not encompass merely any party with whom the petitioner is in “privity.” “Privies” is effectively synonymous with “customers”– and, not merely any customers, but customers who the petitioner is legally obligated to indemnify for their alleged infringement.
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PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers
Acxiom Corp. v. Phoenix Licensing LLC (CBM2015-00068, Paper 23) presents a rare denial of a petition for covered business method review (as of June 25, 2015, CBM petitions are granted at a rate of over 70%). In denying the petition, the PTAB stressed that, to have standing, a petitioner must have been sued (or threatened with suit), or be a privy to a party that has been sued (or been threatened with suit). And “privy” in this context is synonymous with customer. In other words, suppliers have a right to step in for their customers with a CBM, but not the other way around.
Continue Reading PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers
Petitioners Should Heed the PTAB’s Preference for Corroborated Witness Testimony
In its third PGR institution decision, the PTAB provided its first guidance regarding witness testimony to support a showing of prior public use or sale in PGRs. The decision is a cautionary tale that the PTAB strongly prefers corroboration of witness testimony, much like the corroboration required during interference proceedings. This is not a surprise, given that the PTAB and its predecessor also presided over interference proceedings. Thus, uncorroborated witness testimony, alone, will not be sufficient to show prior public use or sale. Netsirv v. Boxbee, Case PGR2015-00009, Paper No. 10 (August 4, 2015).
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Dissent in SAP v. Versata: Federal Circuit Lacks Authority to Review
As reported earlier, the Federal Circuit recently affirmed the PTAB’s final written decision in SAP v. Versata, No. 2014-1194 (Fed. Cir. 2015), its first final written decision in a CBM review. As part of that decision, the Court determined that it had jurisdiction to determine whether the patent at issue was a “covered business method patent” within scope of the PTAB’s authority for a CBM review under Section 18 of the American Invents Act (“AIA”), and that such review by the Court was not precluded by 35 U.S.C. § 324(e), which provides that a decision to institute a CBM review is “final and nonappealable.”
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PTAB Allows Second Chance to Prove Patent is a Covered Business Method
Should a Petitioner who failed to obtain institution be allowed to refile and try again? When the initial failure was in proof that a patent is a covered business method (CBM) patent, the Board allowed a second petition to proceed. After the Board initially denied institution (CBM2014-00084), Motorola Mobility successfully obtained institution of a new CBM petition directed to the same patent (CBM2015-00004) but containing a more extensive section addressing the CBM standard.
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Who Benefits from the Federal Circuit’s SAP v. Versata Decision?
The Federal Circuit recently issued its opinion deciding SAP v. Versata, an appeal of the first PTAB final written decision in a post grant AIA trial. The court’s opinion (split on one issue) is significant because it decides a number of issues that will guide pending and future AIA trials, especially CBM proceedings. Below is a short summary of who—patent owners or petitioners—can claim victory in the court’s five major conclusions.
Continue Reading Who Benefits from the Federal Circuit’s SAP v. Versata Decision?