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Failure Concept

On October 17, 2016, the PTAB denied institution of three IPRs [IPR2016-00912, IPR2016-00915, and IPR2016-00916] petitioned by Swiss Pharma AG against three patents owned by Biogen IDEC directed to its anti-α4 integrin antibody product, TYSABRI (natalizumab), marketed to treat multiple sclerosis and Crohn’s disease. The PTAB weighed the Petitioner’s assertions of routine experimentation against the Patent Owner’s arguments of unpredictability in deciding the outcome.Continue Reading PTAB Denies Institution of 3 IPRS Against Biogen’s TYSABRI® (natalizumab)

Woman Upset Hitting Forehead with her HandIn 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 PAR.  The Board joined the two proceedings and construed the claims-at-issue in accordance with the plain meaning of the recited terms, crediting the unrebutted testimony of Petitioners’ expert in holding the claims unpatentably obvious under 35 U.S.C. § 103(a) over various combinations of the cited art.
Continue Reading Ignore Occam’s Razor at your Peril

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The Federal Circuit continues to declare aspects of the PTAB’s work to be beyond its review.  Most recently, in Husky Injection Molding Systems Ltd., v. Athena Automation Ltd., Case Nos. 2015-1726, 2015-1727 (Fed. Cir. Sept. 23, 2016), the Federal Circuit, in a 2-1 decision, concluded that it lacked authority to question the PTAB’s refusal to extend the equitable doctrine of assignor estoppel to PTAB proceedings. We previously reported on the Federal Circuit’s opinion regarding the merits of the PTAB’s Final Decision invalidating the Husky patent. The following discussion instead focuses on those aspects of the Federal Circuit’s opinion concerning appellate review of the Board’s decision to institute review.
Continue Reading Federal Circuit Declares Unreviewable PTAB’s Refusal to Apply Assignor Estoppel

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The Supreme Court recently issued orders (Oct. 3 and Oct. 11) denying several petitions for certiorari challenging aspects of AIA trials. As we previously reported, two of those petitions challenged the constitutionality of AIA trials and the Patent Office’s authority to cancel patent rights between private parties. Cooper v. Lee, __ S.Ct. __, 2016 WL 361681 (Oct. 11, 2016); MCM Portfolio v. Hewlett-Packard Co., et al., __ S.Ct. __, 2016 WL 1724103 (Oct. 11, 2016). On the same day, the Court denied Merck’s petition challenging the Federal Circuit’s deferential standard of review of the PTAB’s AIA trial decisions. Merck & Cie, et al. v. Gnosis S.P.A. et al.,__S.Ct. __, 2016 WL 4014485 (Oct. 11, 2016). We covered the Federal Circuit decision at issue here.
Continue Reading Supreme Court Declines to Weigh in on AIA Issues

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This blog previously referenced Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290 as an example of the Board granting a request for rehearing, but ultimately confirming its original decision.  On appeal, the Federal Circuit vacated the Board’s decision on the particular issues raised by the Petitioner in the request for rehearing, suggesting that if at first you don’t succeed, try again at the Federal Circuit.  Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., 2015-1726, 2015-1727 (Fed. Cir. Sep. 23, 2016). (As we will discuss separately, on the Patent Owner’s cross-appeal, the Federal Circuit determined that it lacked authority to review the PTAB’s refusal to extend the equitable doctrine of assignor estoppel to PTAB proceedings.)
Continue Reading PTAB Failed to Properly Apply Incorporation by Reference Standard for Anticipation

Magnifying GlassWe previously reported on the Federal Circuit’s decision in Ethicon Endo-Surgery, Inc. v. Coviden, No. 2014-1771 (Fed. Cir. 2016) that the AIA does not preclude the same PTAB panel from rendering both institution and final decisions in an IPR, and we previously reported on the Federal Circuit’s denial, over Judge Newman’s strong dissent, of the Patent Owner’s petition for an en banc hearing of this decision.  On September 20, 2016, the Patent Owner, Ethicon, filed a petition for a writ of certiorari with the Supreme Court, requesting Supreme Court review, and reversal of, the Federal Circuit’s decision.
Continue Reading Petition Solicits Supreme Court Review of PTAB’s Authority to Institute IPRs

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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 petitions since 2012, and it received over 1,900 in the fiscal year that ended September 30, 2016. In setting the fee structure for administering those trials, the Patent Office had to estimate the demand and workload based on limited data from its administration of inter partes reexamination and interference proceedings.
Continue Reading Patent Office Proposes to Increase AIA Trial Fees

Route 22 signA pair of recent decisions, one from a federal district court and another from the PTAB, highlight the potential of inconsistent results regarding patent validity. In Microwave Vision, S.A. v. ETS-Lindgren Inc., Civ. Action No. 1:14-CV-1153-SCJ (D. Ga. Sept. 20, 2016), the court denied an accused infringer’s (ETS’s) motion for summary judgment of invalidity, after addressing and ultimately disagreeing with the Board’s analysis of the patent in a parallel IPR. The Board opined, but did not decide, that the same patent claims may be invalid for indefiniteness and decided not to institute an IPR. This seemingly places a patent challenger in a Catch 22 position insofar as the Board won’t institute IPR to address prior art patentability because it cannot construe the claim, yet the court won’t conclude the claim is indefinite because it disagrees with the Board.
Continue Reading District Court Rejects Indefiniteness Argument Despite No Findings

Trade SecretsI had the opportunity to attend the ChIPs (Chiefs of Intellectual Property) conference in Washington DC this week and thought that several of the panels that I attended would be of interest to the PTABWatch readership.  The organization is focused on the advancement of women in tech, law, and policy and enjoys strong participation from the judiciary, PTO, copyright office, and many prominent in-house and private-practice attorneys. For more information about ChIPs, check out the website at chipsnetwork.org.
Continue Reading ChIPs Conference Coverage

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.