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 Although Celltrion initially had permission to rely on testimony of BI’s expert, that permission was withdrawn after BI unilaterally requested adverse judgment in its IPRs.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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IPO Annual Meeting Panel Spars Over Fairness of Current IPR System
Welcome to all of you who are new readers joining us from the IPO Annual Meeting (#IPOAM15). I hope that your time in Chicago was enjoyable and that you will add us to your RSS feeds or bookmark the blog and return often. For those who were unable to attend, the Tuesday panel titled “Post Grant Proceedings at the USPTO” offered a wide-ranging, lively discussion of the current state of post-grant proceedings and proposed solutions to perceived weaknesses in the current system.
Continue Reading IPO Annual Meeting Panel Spars Over Fairness of Current IPR System
PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day
The Patent Trial and Appeal Board (PTAB) is granting inter partes review (IPR) petitions at a 70% clip. Imagine the surpris
e, then, when on a single day, September 16, 2015, petitioners went an incredible 0 for 5—the PTAB denied five petitions for IPR and granted none! It seemed like a statistical improbability. Maybe a signal that the tides have turned for patent challengers?
Continue Reading PTAB Drops the Hammer on Petitioners: Five IPR Petitions Denied on the Same Day
Mind The Gap: The PTAB Will Not Bridge It For You
Petitioners should beware gaps in their evidence and reasoning. Two DepoMed patents recently survived their second IPR challenge because the petitioner failed to meet its burden of proof. The PTAB rejected petitioner’s obviousness arguments as “overly vague and nonspecific,” concluding that petitioner failed to “explain persuasively why or how a person of ordinary skill in the art would modify the drug formulation” of the prior art to develop the claimed formulation, and failed to show a reasonable expectation of success.
Continue Reading Mind The Gap: The PTAB Will Not Bridge It For You
PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard
Score another win for pharma against investment funds-turned-IPR petitioners. On September 21, 2015, the PTAB denied institution of Ferrum Ferro Capital, LLC’s (“FFC”) petition for IPR of an Allergan patent claim related to its Combigan® eye-drop product for treating glaucoma. This dispute has attracted publicity for having bled into the courts, where Allergan has sued FFC for extortion, unfair competition, and malicious prosecution. The PTAB’s non-appealable denial of FFC’s petition is obviously a significant victory for Allergan, and follows the PTAB’s recent denials of two IPR petitions filed by the Coalition For Affordable Drugs.
Continue Reading PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard
PTAB Applies the Estoppel Provision of the AIA to Deny an IPR Petition
The PTAB recently denied institution of an inter partes review (IPR) on the basis of the estoppel provision of the AIA (35 USC § 315(e)). Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (PTAB Sept. 16, 2015). The decision is not appealable, and is significant because it offers guidance on how the PTAB will construe this provision and offers examples of when the PTAB will and will not apply the provision to deny grounds for an IPR.
Continue Reading PTAB Applies the Estoppel Provision of the AIA to Deny an IPR Petition
PTAB Considers Qualifications To Testify Concerning The Understanding of One of Ordinary Skill
En route to holding the claims of the challenged patent invalid, the PTAB addressed two issues regarding the qualifications of a declarant providin
g testimony concerning how one of ordinary skill would understand the applied prior art. U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00639, Paper 27 (Sept. 14, 2015). The first issue was whether the declarant needed to be qualified as an “expert” on the relevant subject matter under Fed.R.Evid. 701, 702, at least in instances where the testimony was not sought to be excluded.
Continue Reading PTAB Considers Qualifications To Testify Concerning The Understanding of One of Ordinary Skill