Inter Partes Review / IPR

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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 no majority opinion. The salient take-away, as Circuit Judge O’Malley’s opinion for a five-judge plurality concludes, is that “very little said over the course of the many pages that form the five opinions in this case has precedential weight.” 
Continue Reading Fractured Federal Circuit Reallocates Burden of Proof in AIA Trials

PTAB rules prohibit raising new arguments in a reply brief, but it can be difficult to distinguish between an improper reply argument and a proper rebuttal. In Idemitsu Kosan Co. v. SFC Co., No. 2016-2721 (Fed. Cir. Sept. 15, 2017), the Federal Circuit determined that the IPR petitioner properly made a rebuttal argument—not a belated, new argument—in its reply brief, and the court affirmed the PTAB’s decision canceling the challenged claims for obviousness.
Continue Reading Petitioner Made Rebuttal Argument in Reply, Not an Improper New Argument

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 the day after filing its petition, which was one day after the statutory filing deadline under 35 U.S.C. § 315(b).
Continue Reading Late Payment of Petition Fee Thwarts IPR

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 (3) the claim does not recite any function for the means term to perform.

In Skky, Inv. v. MindGeek, SARL, Appeal 16-2018 (Fed. Cir. June 7, 2017), the Federal Circuit upheld the PTAB’s decision that the claim term “wireless device means” of U.S. Patent 7,548,875 (the “’875 patent”) was not a means-plus-function term pursuant to Section 112 ¶ 6.Continue Reading How to Overcome a Section 112 ¶ 6 Means-Plus-Function Presumption

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 IPR petition, which the Board granted only on obviousness grounds. The later IPR petition would have been time-barred but for the Board’s conclusion, according to an expanded panel of administrative patent judges (APJs), that the statutory joinder provision “permits joinder of issues, including new grounds of unpatentability, presented in the petition that accompanies the request for joinder.”
Continue Reading Adding Two More to the List of Serious Questions about AIA Trials

As previously discussed in our post covering the state of IPR estoppel, initial district court decisions have varied regarding the scope of IPR estoppel applied to ground for invalidity not raised in a petition, but that could have been raised. Two recent decisions may show a trend toward uniformity.

In Cobalt Boats, LLC v. Sea Ray Boars, Inc., Judge Morgan of the Eastern District of Virginia ruled on motions in limine, including a motion regarding the scope of IPR estoppel. Case no. 2:15cv00021 (E.D. Va. June 5, 2017).
Continue Reading Two More District Courts Apply IPR Estoppel to Grounds Not Raised In Petition

In IPR 2016-00036, a Bosch windshield wiper patent succumbed to Costco’s challenge on grounds of obviousness.   In its final written decision, the Board held claims 13, 17, and 18 of U.S. Patent No. 6,944,905 obvious.  IPR 2016-00039, discussed here, is another Board decision holding obvious several claims of U.S. Patent No. 7,228,588, another member of Bosch’s windshield wiper patent portfolio.  Unlike the Board’s finding in IPR 2016-00039 that PO failed to establish a nexus between proferred evidence and the claims sufficient to provide persuasive evidence of secondary considerations of non-obviousness, PO did establish that nexus in IPR 2016-00036.  Even with that nexus, however, a preponderance of the evidence led the Board to hold the challenged claims unpatentably obvious.
Continue Reading Secondary Considerations Again Fail to Shore Up Patent Estate

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 was the first to address a situation where a university owned a patent jointly with a company.  This decision follows two earlier cases, Covidien v. University of Florida , discussed here, and NeoChord, Inc. v. University of Maryland, Baltimore, [Case No. IPR2016-00208, Paper 28 (PTAB, May 23, 2017)], where the Board determined that sovereign immunity under the Eleventh Amendment as an “arm of the state” prevents an IPR from being instituted regarding patents owned by state universities.
Continue Reading IPR Challenge May Proceed Even in the Absence of Some Patent Owners

The PTAB recently canceled the University of Pennsylvania’s U.S. Patent No. 7,625,558, a potentially fatal blow to the University’s suit against Eli Lilly and Company alleging its cancer therapeutic Erbitux® (centuximab) infringes the patent.  Eli Lilly and Co. v. Trustees of the Univ. of Penn., Case IPR2016-00458 (July 13, 2017). The PTAB’s decision resolved testimony from the parties’ competing expert witnesses in favor of the Petitioner (Eli Lilly and Company), thus highlighting how the PTAB’s scientific acumen can be leveraged to effectively short-circuit an otherwise expensive and time-consuming lawsuit.
Continue Reading Eli Lilly Successfully Challenges U Penn Erbitux® Claims at PTAB, Derailing Infringement Suit

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 proceedings at the PTAB.  Enactment of this Act would severely diminish the usefulness of AIA proceedings. 
Continue Reading Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

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.