In a final written decision issued on April 24, 2017, the PTAB canceled all four challenged claims of U.S. Patent No. 8,671,057, directed to detecting invalid and fraudulent clicks in pay-per-click web advertising (Google Inc. v. Zuili, CBM2016-00008 (Paper 56)). The PTAB found all four claims unpatentable under 35 U.S.C § 101, and obvious under 35 U.S.C. § 103 over a combination two prior art documents related to a study on online advertising reporting and auditing.
Continue Reading Pay-Per-Click Patent Found Ineligible Under Section 101
PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification
In In re Schweickert, No. 2016-1266 (Fed. Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being obvious over prior art. The Federal Circuit determined that the PTAB’s conclusion of obviousness was based on no more than a broadly-stated assertion that the proposed modification was within the knowledge of a person having ordinary skill in the art. The PTAB’s decision, according to the court, lacked a sufficient factual basis for why the skilled artisan would have modified the prior art to arrive at the claimed invention—a fact needed to support a conclusion of obviousness.
Continue Reading PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification
Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPR
On June 7, 2017, the PTAB issued a final written decision in IPR 2016-00254 canceling claims in a Fresenius Kabi USA, LLC (Fresenius) patent covering Diprivan®. The PTAB instituted the IPR in response to a petition filed by hedge fund manager Kyle Bass and his colleague Erich Spangenberg. Diprivan® is the commercial name for propofol, an intravenous anesthetic agent used during surgery and other medical procedures.Continue Reading Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPR
PTAB Exercised Discretion to Terminate Ex Parte Reexaminations in Ariosa v. Illumina; CAFC to Review
Third parties seeking to challenge pre-AIA patents in the USPTO often choose between IPR and ex parte reexamination. In some cases, petitioners pursue both proceedings, sequentially or in parallel, taking advantage of different timelines to completion, different standards for institution, and using insights gained in one proceeding in the other. The PTAB recently exercised its discretion to terminate three reexaminations filed against patents also challenged by IPR in Ariosa Diagnostics, Inc. v. Illumina, Inc., IPR2014-01093, Paper 81 (May 24, 2016). In the pending appeal, the stage is set for the Federal Circuit to consider the extent of the PTAB’s discretion in terminating post-grant proceedings in these circumstances. Case Nos. 2016-2388, 2017-1020 (Fed. Cir.).
Continue Reading PTAB Exercised Discretion to Terminate Ex Parte Reexaminations in Ariosa v. Illumina; CAFC to Review
One-Year Time Bar Does Not Apply to a Request for Joinder of IPR Proceedings
Teva Pharmaceuticals USA, Inc. (“Teva”) filed a Petition, seeking an IPR of claims 1–20 of Allergan’s U.S. Patent No. 8,642,556. [IPR2017-00579, Paper No. 9] Along with the Petition, Teva filed a Motion for Joinder to join Mylan Pharmaceuticals Inc. v. Allergan, Inc., IPR2016-01129. This blog has previously reported on the topic of joinder in IPR Petitions here and here.
Teva’s Petition was not timely, having been filed more than one year after Allergan filed a complaint alleging infringement of the ‘556 patent against Teva. Teva’s Motion for Joinder, however, was filed within one month of the date that the Board instituted review in response to Mylan’s Petition. Under 37 C.F.R. § 42.122(b), Teva’s Motion for Joinder with Mylan’s Petition was timely.
Continue Reading One-Year Time Bar Does Not Apply to a Request for Joinder of IPR Proceedings
AIA Estoppel – 7 Things We Know So Far
When the America Invents Act was enacted, one of the biggest questions facing petitioners was the scope of the estoppel set forth in 35 U.S.C. § 315(e). While IPR was expected to provide a cheaper, more efficient method of challenging the validity of a patent, what would the challenger be giving up?
The statute provides that for any patent claim addressed in a final written IPR decision the petitioner (or real party in interest), may not request, maintain, or assert that any such claim is invalid on a ground that the petitioner “raised or reasonably could have raised” during the IPR in any proceeding before the patent office, or in any action in the district courts or the ITC. 35 U.S.C. § 315(e). The legislative history of the statute suggests that Congress intended a broad application of estoppel. See, e.g., 157 Cong. Rec. S1375, 1358 (Daily Ed. March 8, 2011) (Statement of Senator Grassley) (indicating that inter partes review “will completely substitute for at least the patents-and-printed publications portion of the civil litigation”).Continue Reading AIA Estoppel – 7 Things We Know So Far
Supreme Court to Decide Whether PTAB May Institute/Decide AIA Trials on Fewer than All Challenged Claims
An updated discussion of this issue is available here: Supreme Court Decides that IPR Final Decisions Must Address All Challenged Claims
The Supreme Court issued an order on May 22, 2017, granting SAS Institute’s petition for a writ of certiorari to review the Federal Circuit’s judgment in SAS Institute, Inc. v. ComplementSoft, LLC, 825 F.3d 1341 (Fed. Cir.), reh’g en banc denied, 842 F.3d 1223 (Fed. Cir. 2016) (order).Continue Reading Supreme Court to Decide Whether PTAB May Institute/Decide AIA Trials on Fewer than All Challenged Claims
Claim Construction Sends Duke’s Patent Back to PTAB for Reconsideration, In Part
In a recent appeal from a PTAB final written decision, the Federal Circuit reversed the Board’s determination that all claims of a Duke patent were unpatentable (Duke Univ. v. BioMarin Pharm. Inc., Appeal No. 2016-1106 (Fed. Cir., April 25, 2017). The court concluded that certain of the Board’s claim constructions were incorrect, and that others, while appropriate, were mis-applied and reversed the Board’s decision on anticipation, as well as obviousness of some claims.
Continue Reading Claim Construction Sends Duke’s Patent Back to PTAB for Reconsideration, In Part
Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other
In Wasica Finance GmbH v. Continental Automotive Sys., Inc., (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed-in-part and reversed-in-part two PTAB final written decisions cancelling some but not all challenged claims of U.S. Patent No. 5,602,524 (“the ‘524 patent”). The PTAB and court decisions are interesting because together they highlight the consequence of not supporting seemingly strong arguments with expert witness testimony. Further, the decisions highlight the consequence of not explaining how facts implicate esoteric nuances in the patent laws.Continue Reading Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other
Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver
In the latest development in the ongoing patent battle between Google and SimpleAir Inc., a Federal Circuit panel agreed with SimpleAir that Google waived a claim construction it asserted on appeal because Google had failed to argue that construction before the PTAB.
SimpleAir originally asserted a series of patents against Google, including U.S. Patent No. 8,601,154 (“the ’154 patent”) directed to a data communication system connecting on-line networks with on-line and off-line computers. Google challenged the validity of the ’154 patent in an IPR. The PTAB determined the challenged claims of the ’154 patent were not invalid, concluding that Google failed to identify in the prior art “a central broadcast server,” recited in the challenged claims. Google appealed the PTAB’s final written decision, and argued that the PTAB erred in its interpretation of this limitation.
Continue Reading Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver