Inter Partes Review / IPR

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Update: Overruled in part byAqua Products, Inc. v. Matal.Pen shot on white background with high contrast cross process look

Earlier this week, we wrote about the post-hearing briefing the Federal Circuit invited in Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015), and the questions it posed regarding the PTAB’s administration of inter partes review. The court issued its decision in that case yesterday, answering some of the questions it posed and, for the first time, reversed a PTAB claim construction, vacated the PTAB’s decision of unpatentability, and remanded the IPR for further proceedings.
Continue Reading Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend

Following oral argument in an appeal of an IPR in which the PTAB canceled a number of challenged claims and denied the Patent Owner’s motions to amend, the Federal Circuit requested additional briefing from the parties and the Director of the USPTO (Intervenor), concerning interpretation of the PTAB rule for filing motions to amend during an IPR, 37 CFR § 42.121. Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015). The questions raised by the Federal Circuit panel suggest that the Court is likely to provide guidance on the PTAB’s claim amendment procedures when it issues its decision in the appeal.
Continue Reading Federal Circuit Expected to Provide Guidance on PTAB Claim Amendment Procedures

The PTAB granted leave on June 9 for the patent owner, Celgene Corporation, to file a motion for sanctions seeking dismissal in several IPRs¹ filed by the Coalition for Affordable Drugs. The Coalition for Affordable Drugs, an organization created by the hedge fund Hayman Credes Master Fund L.P., has filed multiple IPRs against pharmaceutical companies with the publicly announced intention to lower drug prices for everyone by invalidating patent protections that it contends have little value.
Continue Reading Is the Coalition for Affordable Drugs Abusing the IPR Process?

PatentAs discussed yesterday, on June 5, 2015, for just the second time in IPR history, the Board granted a patent owner’s contested motion to amend claims.  Reg Synthetic Fuels, LLC v. Neste Oil Oyj, IPR2014-00192 (PTAB June 5, 2015).¹  Are the facts of Neste really so different from the dozens of motions to amend the Board has previously denied, or has something changed?
Continue Reading PTAB Relaxing its Application of Law Governing IPR Claim Amendments

Businessman iconWhether a non-identified party is a real party-in-interest to a proceeding is a highly fact-dependent question. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,759 (Aug. 14, 2012) (“Trial Practice Guide”) (citing Taylor v. Sturgell, 553 U.S. 880 (2008)).  “A common consideration is whether the non-party exercised or could have exercised control over a party’s participation in a proceeding.” Trial Practice Guide, 77 Fed. Reg. at 48,759 (citing Taylor, 553 U.S. at 895). 
Continue Reading Real Party-In-Interest Not Necessarily Established by Co-Defendants in Litigation

Empty vintage congress hall with seats and microphones.Late June 2, the Senate Judiciary Committee released a new version of its Protecting American Talent and Entrepreneurship (PATENT) Act, S. 1137.  In response to prodding by industry groups, the bill now includes reforms directed at preventing abuse of the Patent Office’s post-grant proceedings, IPRs and PGRs, against patent owners The bill is here.
Continue Reading PTAB Review Reform in Bill Approved by Senate Committee

On May 27, 2015, the Board issued a final written decision in Organik Kimya AS v. Rohm & Hass Co., IPR2014-00185, confirming the patentability of all challenged claims of U.S. Patent No. 6,020,435.

The ‘435 patent is directed to a chemical process for preparing low-density “hollow” or “voided” multi-stage emulsion polymers used in coating compositions such as paints. These emulsion polymers are generally prepared by swelling a core/shell emulsion polymer in such a way that one or more voids form in the interior of the emulsion polymer particle.
Continue Reading PTAB Upholds Claims Directed to Chemical Process Based on Expert Testimony and Experimental Evidence

On May 22, 2015, the Board granted Petitioners Motion for Joinder in Mercedes-Benz USA, LLC and Mercedes-Benz U.S. International, Inc. v. Innovative Display Technologies, LLC, IPR2015-00360. Mercedes-Benz sought to join its proceeding with LG Display Co., Ltd. v. Innovative Display Technologies, LLC, IPR2015-00360, which was instituted on January 13, 2015. Mercedes-Benz filed its petition approximately one month before the LG IPR was instituted. Both proceedings seek to invalidate claims of U.S. Patent No. 7,300,194 (“the ‘194 patent”) on identical grounds.
Continue Reading PTAB Grants Joinder of Proceedings Raising Identical Challenges

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.