Tag Archives: America Invents Act

Aqua Products Dissent Would Keep Burden for Amendments on Patent Owners

As discussed here, the en banc Federal Circuit vacated and remanded the PTAB’s decision in Aqua Products, Inc. v. Matal, determining that the PTAB erred in placing the burden of persuasion on the patent owner for proposed claim amendments. Four judges on the eleven-judge en banc panel dissented, and would have upheld the PTO’s rule, … Continue Reading

Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials

An eleven-judge en banc panel of the Federal Circuit issued its long awaited decision in Aqua Products, Inc. v. Matal, Appeal 2015-1777, on October 4, 2017, vacating and remanding the IPR final decision for the PTAB to determine whether the patent owner’s proposed amended claims are patentable. The court’s decision includes five separate opinions, though … Continue Reading

Interim Director Matal Expresses High Confidence in Constitutionality of AIA Trials

An updated discussion of this issue is available here: The Supreme Court Finds IPR Proceedings Constitutional Joe Matal, interim director of the Patent Office, addressed the IPO’s 45th Annual Meeting on September 19, 2017, in San Francisco. He said that the Office, and particularly the PTAB, experienced a productive yet tumultuous five years since the … Continue Reading

Late Payment of Petition Fee Thwarts IPR

If a Petitioner does not timely file the required petition fee, an IPR will not be instituted. In Cultec, Inc. v. Stormtech LLC  [Case No. IPR2017-00526, Paper 14 (July 17, 2017)], consistent with earlier decisions, the Board denied institution of an IPR because the Petitioner, Cultec, Inc., did not pay the required filing fee until … Continue Reading

How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption

PTABWatch Takeaway: Claims that recite the term “means” may trigger the means-plus-function presumption under pre-AIA 35 U.S.C. § 112 ¶ 6 (Section 112(f) of the AIA), but the presumption can be overcome where: (1) the means term itself recites structure; (2) that structure is “common parlance” to those of ordinary skill in the art; and … Continue Reading

Adding Two More to the List of Serious Questions about AIA Trials

In a routine AIA trial, the PTAB determined that challenged claims in a patent directed to HVAC systems were unpatentable as being obvious and anticipated by prior art. This trial was unusual, however, because the Board premised its anticipation conclusion on a joined IPR petition that successfully rectified evidentiary deficiencies in the same petitioner’s earlier … Continue Reading

IPR Challenge May Proceed Even in the Absence of Some Patent Owners

When a patent is co-owned by a state university and another party, an IPR may proceed against the remaining party even after the state university co-owner has been determined to have sovereign immunity from the proceeding.  Reactive Surfaces Ltd., LLP v. Toyota Motor Corp., [Case No. IPR2017-00572, Paper 32 (July 13, 2017)]. This recent decision … Continue Reading

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPR

On 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, … Continue Reading

One-Year Time Bar Does Not Apply to a Request for Joinder of IPR Proceedings

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 … Continue Reading

Supreme Court to Decide Whether IPRs Violate Article III and the Seventh Amendment

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 … Continue Reading

Supreme Court to Decide Whether PTAB May Institute/Decide AIA Trials on Fewer than All Challenged Claims

An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims The Supreme Court issued an order on May 22, 2017, granting SAS Institute’s petition for a writ of certiorari to review the Federal Circuit’s judgment in SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 … Continue Reading

Presentation Not Qualified as a Printed Publication Because Audience Lacked Expertise

In a recent final written decision (Trustees of the University of Pennsylvania v. Coalition for Affordable Drugs VIII, LLC, IPR2015-01835, Paper No. 56 (PTAB Mar. 6, 2017)), the Board determined that the Coalition for Affordable Drugs (“Petitioner”) failed to demonstrate that claims 1-10 of U.S. Patent No. 8,618,135 (“the ’135 patent) were obvious. The claims … Continue Reading

Coalition for Affordable Drugs Fails to Knock Out Biogen’s Tecfidera® Patent

On March 21, 2017, the PTAB refused to cancel claims of a Biogen MA Inc. (Biogen) patent covering multiple sclerosis drug Tecfidera® during IPR2015-01993, which was instituted in response to a petition filed by the Coalition for Affordable Drugs V LLC (CFAD), a group started by hedge fund manager Kyle Bass. Biogen’s U.S. Pat. No. … Continue Reading

Tech Industry Debates AIA Proceedings at Inaugural PTAB Conference

Introduction of Panelists and summary of Session Early March 2017 kicked off the PTAB Bar Association’s Inaugural Conference in Washington, D.C.  I had the privilege of attending several sessions, one of which was “View from the Tech Industry,” which included panelists from the Tech Industry who commonly practice before the PTAB in either petitioner or … Continue Reading

Pending Bill Would Deliver More Judicial Scrutiny to USPTO and FDA Rules

 The House of Representatives recently sent to the Senate its bill (H.R.5) that combines six previous regulatory reform bills, including, as Title II of the bill, the “Separation of Powers Restoration Act.”  Section 202 of the bill effectively removes the option for courts to apply Chevron deference to agency rulemaking and interpretations.  Thus, rather than deciding … Continue Reading

Your Supplemental Evidence is Timely, but is it Relevant to a Claim at Issue? PTAB Will Decide.

Once a trial has been instituted at the PTAB, a party seeking consideration of supplemental evidence may file a motion in accordance with the following requirements: (1) the request for the authorization to file a motion to submit supplemental information must be made within one month of the date the trial was instituted; and (2) … Continue Reading

PTAB Issues First Biotech/Pharma Post-Grant Review Final Written Decision – All Claims Survive

The first final written decision in a post-grant review of a patent arising from Art Unit 1600 issued November 14, 2016, in Altaire Pharm. Inc.. v. Paragon Bioteck, Inc., PGR2015-00011.  PGRs allow challenge based on enablement, written description, indefiniteness, and subject matter eligibility, in addition to the novelty and obviousness bases available in IPRs, permitting … Continue Reading

One Fish, Two Fish, Red Fish, Enfish: Unraveling the Maze of Parallel Court/PTAB Proceedings

The saga of Enfish v. Microsoft continues.  The Enfish litigation provides a textbook example of the multi-pronged defense now common with the advent of post-grant review and the evolving law concerning unpatentable subject matter.  Many are no doubt aware of the significant Federal Circuit decision on patentable subject matter (i.e. Section 101) which this litigation … Continue Reading

Federal Circuit to take AIA Time Bar issue En Banc

An updated discussion of this issue is available here: PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit As we had predicted in a previous post, the Federal Circuit, on January 4, 2017, granted patent owner Wi-Fi One LLC’s petitions for rehearing en banc regarding the interpretation of, and interplay between, 35 U.S.C. § 314(d) … Continue Reading
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