The Federal Circuit’s precedential decision in In re: Warsaw Orthopedic, Inc., No. 2015-1050, 2015-1058 (Fed. Cir. Aug. 9, 2016), highlights recurring themes in appeals of PTAB IPR decisions. On one hand, the Federal Circuit is reluctant to overturn a PTAB decision canceling claims for obviousness based on Patent Owner’s assertions that the PTAB failed to properly weigh certain facts found in reaching its decision. On the other hand, the Federal Circuit will not hesitate to vacate and remand PTAB decisions where the PTAB does not adequately describe its reasons for concluding a claimed invention is obvious.
Continue Reading Federal Circuit Refuses to Reweigh Factual Findings, But PTAB’s Conclusory Statements Are Insufficient
Secondary Considerations Change Panel’s Mind after Institution
The PTAB is not often persuaded by objective evidence of non-obviousness, i.e., secondary considerations, when the scope and content of the prior art includes all of the features recited in the claims. However, a pair of recent PTAB decisions, Innopharma Licensing, Inc. v. Senju Pharmaceutical Co., LTD., IPR2015-00902, Paper 90, and IPR2015-00903, Paper 82 (PTAB July 28, 2016), provides a rare example where the PTAB completely changed its mind after instituting the IPRs. The decisions offer the same message, and this post focuses on the decision in IPR2015-00902, where the PTAB found all of the challenged claims of U.S. Patent No. 8,669,290 not obvious over the applied prior art references based on the objective evidence of non-obviousness.
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PTAB Improperly Shifted Burden of Proof in IPR
In In Re Magnum Oil Tools International Ltd., the Federal Circuit reversed the PTAB’s final decision cancelling challenged claims for obviousness because the record did not include substantial evidence of a motivation to combine references, and because the PTAB improperly shifted the burden of proof on this issue to the patent owner.
Petitioner McClinton Energy Group filed an IPR petition challenging claims of a patent relating to technology for “fracking” (oil drilling using hydraulic fracturing). In fracking, a wellbore is drilled into the earth, and a fluid mixture is injected into the wellbore. Downhole plugs are used to divide the wellbore into separate sections so that different sections of the wellbore may be fracked at different times.
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“Providing . . . information” Step Given No Patentable Weight
The PTAB recently addressed the limits on strategies to patent drug labeling, canceling claims directed to a method of supplying a pharmaceutical product where the method includes a step of providing certain “information” to the medical provider. According to the PTAB, the claimed step of providing the information is entitled to no patentable weight under the “printed matter” doctrine where it is not functionally related to other elements of the claimed method. Specifically, even if the claim says that the information is “sufficient to” cause some effect (e.g., for a medical provider to avoid treating a patient) there is no functional relationship with the claim if the claim doesn’t recite that effect. Praxair Distribution Inc. v. Mallinckrodt Hospital Prods. IP Ltd., IPR2015-00529.
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Been There, Done That: Petitioners Should Find Art and Arguments Not Previously Considered During Prosecution
This blog has previously explained on July 23, 2015, December 10, 2015, and December 16, 2015 why it is important for parties to AIA trials to carefully consider the patent prosecution history. Under 35 U.S.C. § 325(d), the Board has discretion to deny an AIA trial if “the same or substantially the same prior art or arguments previously were presented to the Office.” The Board recently exercised that discretion in denying an inter partes review petition and, in doing so, provided yet another warning to petitioners: do not waste the Board’s time presenting in a petition prior art and arguments that were already considered during prosecution, and be sure to address deficiencies in prior art combinations the patentee overcame during prosecution. Drug Prices for Consumers, LLC v. Forest Labs. Holdings Ltd., Case IPR2016-00379, Paper 14 (PTAB July 1, 2016).
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PTAB Finds Motivation to Combine References, but Cancellation Comes Too Late for More than 200 Defendants
On July 6, 2016, the PTAB cancelled claims in a patent which had bedeviled more than 250 named defendants in litigation dating back to 2008. The list of defendants reads like a Who’s Who of financial and commercial businesses, including the nation’s most prominent banks, credit card companies, online stock traders, e-Commerce retailers, cable and telecommunications companies, airlines, and even all twelve of the nation’s Federal Reserve banks. Any plans the patent owner had to continue its siege of these vast tracts of economic activity were brought to a halt by the PTAB’s final written decision in MasterCard International, Inc. v. Stambler, Case CBM2015-00044, Paper 32 (PTAB 2016), which found that the petitioner, MasterCard, had proven the challenged claims were anticipated by and/or obvious over prior art.
Continue Reading PTAB Finds Motivation to Combine References, but Cancellation Comes Too Late for More than 200 Defendants
Rare Grant of Rehearing of Denial of Petition for Inter Partes Review
The Board initially denied institution of Mylan Pharmaceuticals’ petition for inter partes review of U.S. Patent No. RE44,186, owned by AstraZeneca. After a rare grant of Mylan’s request for rehearing, the Board reconsidered the record and decided to institute the IPR. The decision to institute focused on the content of Mylan’s expert testimony; and although not mentioned in the decision, the replacement of one APJ in the PTAB panel for the decision on rehearing might have played a role in the grant of the request for rehearing and the decision to institute the IPR on rehearing even though both decisions were unanimous.
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Federal Circuit to PTAB – Explain yourself!!
The Federal Circuit recently vacated or reversed-in-part two PTAB final written decisions on the basis that the PTAB did not adequately describe its reasons for concluding the claimed invention is obvious. In both instances, the court criticized the Board’s “broad, conclusory statements” regarding one of ordinary skill’s motivation to adjust prior art teachings. These decisions highlight an attractive grounds for appealing a PTAB’s final written decision.
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The Personal Touch: PTAB Grants Bass and Spangenberg IPR Petition
On May 20, 2016, the PTAB granted Kyle Bass and Erich Spangenberg’s petition for IPR (IPR2016-00245) against a patent owned by Alpex Pharma SA (Alpex). The petition sought cancellation of claims 1-9 of U.S. Patent No. 8,440,170, asserting that the claims were obvious in view of numerous references. The claims of the ‘170 patent are generally directed to orally disintegrating tablets with a speckled appearance. According to the ‘170 patent, the speckled appearance can be achieved by using colored granules of a water-soluble sugar, and provides easy identification by doctors and patients. Bass and Spangenberg argue in the petition that the patent is invalid as obvious because speckles comprising colored granules of a water-soluble sugar were well-known in the art at the time of the invention.
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Federal Circuit Upholds Rule that New Petitioner Arguments Cannot Be Raised in IPR Reply Briefs
The Federal Circuit recently affirmed the Board’s IPR decision that IBS failed to satisfy its burden of demonstrating obviousness of the challenged claims of Illumina’s U.S. Patent No. 7,566,537 (“the ‘537 patent), and determined that the Board did not abuse its discretion in refusing to consider IBS’s reply brief. Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case No. 2015-1693 (Fed. Cir. May 9, 2016). Illumina contended that its challenged claims, directed to a method of labeling nucleotides to determine their identity in a sequencing by synthesis (SBS) method, were nonobvious based on its use of a particular azidomethyl group as a 3′ OH blocking (or protecting) group.
Continue Reading Federal Circuit Upholds Rule that New Petitioner Arguments Cannot Be Raised in IPR Reply Briefs