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United States Constitution and gavel with brass ring.

Two petitions for certiorari are pending before the Supreme Court in which the aggrieved patent owners in MCM Portfolio LLC. v. Hewlett-Packard Co. and Cooper v. Lee are challenging the constitutionality of AIA trials.  The Federal Circuit in MCM Portfolio upheld the PTAB’s authority to adjudicate the validity of issued patents, determining that IPR proceedings are not unconstitutional under Article III or the Seventh Amendment right to a jury trial.  MCM Portfolio LLC. v. Hewlett-Packard Co., 812 F.3d 1284 (Fed. Cir. 2015).  In Cooper, the district court granted summary judgment against Cooper on administrative exhaustion grounds and the Federal Circuit summarily affirmed. Cooper v. Lee, 86 F.Supp.3d 480 (2015);  Cooper v. Lee, Nos. 2015-1483, 2016-1071 (Fed. Cir. 2016).  The Government filed briefs in opposition to both petitions – the Cooper opposition brief was filed in April, and the MCM opposition brief was filed in June.  A decision on the petitions is expected at the beginning of the Supreme Court’s October 2016 term.
Continue Reading Government Weighs in on Constitutionality of Inter Partes Review

A breaking chain link can symbolise failure or success. It?s a strong image expressing the famous weakest chain link, breaking free from a bad habit or finally succeeding / failing in a project.

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 Owner’s priority claim and found an attempt to antedate intervening art inadequate, leading to a holding that the ‘181 claims were unpatentable under 35 U.S.C. § 102(a).  The decision illustrates the potential of intervening art not considered during prosecution and also illustrates the shifting legal view of the patentability of antibody-based technologies.
Continue Reading Priority Claims Unchallenged In Prosecution Can Be Weak Links

Pills flowing out of a bottle of prescription medicine with information of their possible serious side effects.

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.
Continue Reading “Providing . . . information” Step Given No Patentable Weight

Victory comes if you are lucky on dices

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 a rather common means to challenge a competitor’s patent. However, post grant review is gaining in popularity among litigants, adding to the available strategies of overcoming potential barriers to market entry for companies.  For example, while 12 Petitions for PGR were filed in all of 2015, 15 have been filed so far in the first half of 2016. 
Continue Reading The Three-Front Assault: PeroxyChem Uses IPR, PGR and District Court to Challenge Opponent

Funny vintage detective looking through a magnifier

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).
Continue Reading Been There, Done That: Petitioners Should Find Art and Arguments Not Previously Considered During Prosecution

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In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court recognized that a “district court may find a patent claim to be valid, and the agency may later cancel that claim in its own review.”  The Court also recognized that because of the different evidentiary burdens in court versus before the agency—the Patent Office—“the possibility of inconsistent results is inherent to Congress’[s] regulatory design.” Is that inconsistency sensible? As good a case as any to consider that question involves a global pharmaceutical company, one of its top-selling drug products, and a patent it owns that covers the administration of that drug product.
Continue Reading The Possibility of Inconsistent Results Inherent to Congress’s Design of AIA Trial Reviews

Portrait of a young businessman with finger on his lips

On July 1, 2016, The Board awarded attorneys’ fees as a sanction for failure to comply with an agreed protective order. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, IPR2015-01751, IPR2015-01752 (PTAB July 1, 2016). In these IPRs, the patent owner (AIT) disclosed the petitioner’s (RPX’s) confidential information to its president, an attorney representing it in a district court case to which RPX is not a party, and to the CFO of a non-practicing patent licensing company serving as an advisor to AIT. In its order allowing RPX to seek attorneys’ fees, the Board emphasized the importance of promoting respect for and meticulous observance of protective orders.
Continue Reading Shhh, It’s a Secret: Failure to Maintain Confidentiality Can Be Costly

Granted v2We previously reported the May 9, 2016, Patent Office’s study that the PTAB rarely grants motions to amend.  There, we explained that patent owners rarely file motions to amend and, even when such motions are filed, the PTAB rarely grants such motions. Last week, in Google Inc. and Apple Inc., v. ContentGuard Holdings, Inc., Case CBM2015-00040, Paper 8 (PTAB June 21, 2016), the PTAB granted a Patent Owner’s motion to amend. This case is thus a rare example of the PTAB’s willingness to grant a motion to amend when the Patent Owner provides detailed arguments evidencing why a proposed, substitute claim is patentable over the “prior art known to the patent owner.”
Continue Reading “It’s a Bird, It’s a Plane, NO it’s a Granted Motion to Amend.”

US Patent and Trademark Office in Alexandria, VA.

On June 30, 2016, lead APJ Jacqueline Wright Bonilla provided a status report on Inter Partes Review/Post Grant Review in the Biotechnology and Chemical Technology Center 1600 during the Biotechnology/Chemical/Pharmaceutical Customer Partnership (BCP) Conference.  The statistics discussed during this BCP Conference are current as of May 31, 2016. 
Continue Reading Status Report on IPR Statistics for the Biotech/Pharma Technology Center

The AIA provides for the post-grant review of “covered business method patents,” which are defined as:

a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.

AIA §18(d)(1). The PTAB was left to its own devices in the absence of meaningful legislative history to address how broadly this language should be read.
Continue Reading PTAB Standard for Qualifying CBM Patent Reviews is Now Set

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.