Tag Archives: Post Grant Review / PGR

Trial Practice Guide Updates and Future Fee Increases

Today’s Federal Register includes a notice that the Patent Office updated its August 2012 Trial Practice Guide. The Federal Circuit recently noted that the Practice Guide “is a thoughtful and useful resource to which individual Board members and the public might turn for guidance,” but “is not binding on Board panel members.” Application in Internet … Continue Reading

PTAB Issues First Biotech/Pharma PGR Final Written Decision Based On Written Description Challenge

The Patent Trial and Appeal Board has received 37 petitions for post grant review of patents issuing from examination conducted by the Patent Office’s Group Art Unit 1600. The Board has issued four final written decisions thus far.  We discussed the first final written decision here, where all claims were upheld in the face of … Continue Reading

Proposed Hatch-Waxman Amendment Would Effectively Eliminate IPR Challenges by Generics

On June 13, 2018, Senator Orrin Hatch (R-UT) introduced to the Senate Judiciary Committee an amendment to restore the careful balance sought in the Hatch-Waxman Act, which provided incentives for both pharmaceutical innovation and drug affordability. The amendment, titled the Hatch-Waxman Integrity Act of 2018, would modify the IPR process for pharmaceuticals—under Hatch-Waxman and the … Continue Reading

Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims

On April 24, 2018, the Supreme Court issued its decision in SAS Institute, Inc. v. Iancu, holding that if the Patent Office institutes an inter partes review (IPR) proceeding, it must issue a final written decision with respect to the patentability of every patent claim challenged by the petitioner. The Court reversed the Federal Circuit’s … Continue Reading

Avoid Creating Bad Blood with the Board

The Board recently denied a post grant review petition because the challenge was deemed redundant of the Patent Office’s earlier examination of similar claims in a related application. Live Nation Entertainment, Inc. v. Complete Entertainment Resources  B.V., Case No. PGR2017-00038 (PTAB January 16, 2018). The decision offers a cautionary tale for patent practitioners.  The Board … Continue Reading

Petitioners Will Pay More for Immensely Popular AIA Trials

In the November 14, 2017, Federal Register, the Patent Office issued its final rule setting and adjusting the fees the Office charges for its products and services, including relatively substantial increases for standard AIA trial fees (as shown below). As a simple example, a petitioner challenging all claims of a patent containing 30 claims will … 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

To Establish Entitlement to an Earlier Effective Filing Date, Every Claim Limitation Must be Addressed

The PTAB’s final written decision in Inguran, LLC d/b/a Sexing Techs. v. Premium Genetics (UK) LTD., Case PGR2015-00017, Paper 22 (PTAB 2016), illustrates what a Patent Owner must do to demonstrate that a challenged claim is entitled to an earlier effective filing date in an AIA trial. The PGR involved U.S. Patent 8,933,395, which issued … 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

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

It All Depends On How You Frame It

Galaxia Electronics Co., Ltd. v. Revolution Display, LLC, PGR2016-00021, Galaxia sought post-grant review of Revolution’s U.S. Design Patent No. D736,750, entitled “Modular Video Support Frame Member.” The patented design was directed to a support frame for video monitors used in large-scale LED video image displays, such as those used on-stage at rock concerts, on the … Continue Reading

PTAB Institutes Third Biotech/Pharma Post-Grant Review

To date, only 43 petitions for Post-Grant Review have been filed with the PTAB.  Nine PGR petitions (21% of total petitions) have been filed to challenge patents arising from Art Unit 1600, which examines applications directed to biotechnology and organic chemistry subject matter.  The PTAB recently instituted the third ever PGR for a biotech-related patent … Continue Reading

Post-Filing Claim Amendments Don’t Change the Effective Filing Date for Post Grant Review

In considering a novel issue of Post-Grant Review (PGR) eligibility, the Patent Trial and Appeal Board followed the straightforward language of the America Invents Act (“AIA”), and longstanding precedent, holding that post-filing amendments to a pre-AIA patent application do not change its effective filing date and, thus, do not make it eligible for PGR.  David … Continue Reading

Petitioner Not Time-Barred By Service of COFC Complaint

Neither the Federal Circuit nor the PTAB has provided much guidance concerning the proper application of the one-year time-bar for filing IPRs when privity is alleged.  Recently, however, in AM General LLC v. UUSI, LLC, Case IPR2016-01049, Paper 14 (PTAB November 7, 2016), the PTAB has provided some guidance. On May 18, 2016, Petitioner AM … Continue Reading

Proposed Rule to Recognize Patent Agent Privilege in PTAB Proceedings

In its Notice of Proposed Rulemaking published on October 18, 2016, the USPTO proposes to amend the rules of practice before the PTAB to “recognize that, in connection with discovery conducted in certain proceedings at the [USPTO], communications between U.S. patent agents or foreign patent practitioners and their clients are privileged to the same extent … Continue Reading

Ignore Occam’s Razor at your Peril

In IPR 2015-01127, PAR Pharmaceuticals, challenged claims 1-11 of USPN 8,404,215 owned by Horizon Therapeutics, LLC on grounds of obviousness over various combinations of six references.  Lupin Ltd. and Lupin Pharmaceuticals, Inc. filed another challenge to the claims of the ‘215 patent on the same grounds using the same arguments and evidence as used by … Continue Reading

Patent Office Proposes to Increase AIA Trial Fees

In the October 3, 2016, Federal Register, the Patent Office published a notice of proposed rulemaking to adjust various fees the Office charges for its services, including 18% to 56% increases for AIA trial fees (as shown below). According to the notice, the Patent Trial and Appeal Board has received more than 4,700 AIA trial … Continue Reading

Federal Circuit Affirms PTAB Upholding Patent Claims

In what has been a rare outcome to date, the Federal Circuit in Apotex v. Wyeth, dkt. no. 2015-1871 (Fed. Cir. Aug. 16, 2016) affirmed in a non-precedential decision the PTAB’s final written decision in IPR2014-00115 that the challenged claims were not unpatentably obvious over three references.  At trial, the PTAB found that Apotex did … Continue Reading

Federal Circuit Reaffirms that Phillips applies when Patent has expired

It is well accepted that the broadest reasonable interpretation (BRI) standard, which the PTO employs during patent examination, and not the Phillips standard applied in district court proceedings, is generally the proper standard to be used when interpreting claims in Post-Grant proceedings such as IPRs and reexamination proceedings.  However, in In Re CSB-System International, Inc., … Continue Reading

Priority Claims Unchallenged In Prosecution Can Be Weak Links

IPR2015-00291 decided a petition filed by Daiichi Sankyo Co. Ltd. against USPN 8,168,181 owned by Alethia Biotherapeutics, Inc.  The ‘181 patent issued from a continuation-in-part of the U.S. national phase of a PCT application and contains claims drawn to methods of impairing osteoclast differentiation, useful in treating various bone diseases.  The Board denied the Patent … Continue Reading

The Three-Front Assault: PeroxyChem Uses IPR, PGR and District Court to Challenge Opponent

In what could become a common patent challenge strategy, PeroxyChem, a chemical company that sells products useful in water and soil remediation, has employed a three-front assault—combining the relatively young post-grant review procedure, with an IPR and litigation–to take on one of its competitors, Innovative Environmental Technologies (IET).  Litigation together with an IPR has become … Continue Reading
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