Score another win for pharma against investment funds-turned-IPR petitioners. On September 21, 2015, the PTAB denied institution of Ferrum Ferro Capital, LLC’s (“FFC”) petition for IPR of an Allergan patent claim related to its Combigan® eye-drop product for treating glaucoma. This dispute has attracted publicity for having bled into the courts, where Allergan has sued FFC for extortion, unfair competition, and malicious prosecution. The PTAB’s non-appealable denial of FFC’s petition is obviously a significant victory for Allergan, and follows the PTAB’s recent denials of two IPR petitions filed by the Coalition For Affordable Drugs.
Continue Reading PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard
PTAB Applies the Estoppel Provision of the AIA to Deny an IPR Petition
The PTAB recently denied institution of an inter partes review (IPR) on the basis of the estoppel provision of the AIA (35 USC § 315(e)). Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (PTAB Sept. 16, 2015). The decision is not appealable, and is significant because it offers guidance on how the PTAB will construe this provision and offers examples of when the PTAB will and will not apply the provision to deny grounds for an IPR.
Continue Reading PTAB Applies the Estoppel Provision of the AIA to Deny an IPR Petition
PTAB Considers Qualifications To Testify Concerning The Understanding of One of Ordinary Skill
En route to holding the claims of the challenged patent invalid, the PTAB addressed two issues regarding the qualifications of a declarant providin
g testimony concerning how one of ordinary skill would understand the applied prior art. U.S. Endoscopy Group, Inc. v. CDX Diagnostics, Inc., IPR2014-00639, Paper 27 (Sept. 14, 2015). The first issue was whether the declarant needed to be qualified as an “expert” on the relevant subject matter under Fed.R.Evid. 701, 702, at least in instances where the testimony was not sought to be excluded.
Continue Reading PTAB Considers Qualifications To Testify Concerning The Understanding of One of Ordinary Skill
PTAB Requests Further Briefing on Petition for Sanctions Against Hedge Fund Coalition
The PTAB recently revisited Patent Owners’ requests to file motions for sanctions against the Petitioner, Coalition for Affordable Drugs (“CFAD”). The CFAD was started in conjunction with hedge fund manager Kyle Bass, who has been accused of filing IPRs in order to manipulate company stock price for his hedge fund’s monetary gain. Recently, in Coalition for Affordable Drugs v Celgene Corp. (IPR2015-01169), the PTAB authorized Celgene to file a Petition for Abuse of Process against CFAD.
Continue Reading PTAB Requests Further Briefing on Petition for Sanctions Against Hedge Fund Coalition
Move the Court to Award Attorney Fees Incurred in a Parallel PTAB Proceeding
Today, when served with a complaint for patent infringement, the accused routinely petition the PTAB to review the patentability o
f the asserted claims. Often enough, the accused first identifies its invalidity positions and prior art to the Patent Owner through litigation pleadings and discovery. Indeed, many even seek to settle the litigation before either party expends additional resources litigating the matter. But, often enough, the accused are spurned.
Continue Reading Move the Court to Award Attorney Fees Incurred in a Parallel PTAB Proceeding
USPTO Proposes Single APJ Pilot Program for IPR Institution
Citing an interest in improving efficiency, the USPTO published a request for comments on a proposed pilot program that would change the way Inter Partes Review petitions are decided. 
Currently, a panel of three administrative patent judges (APJs) consider IPR petitions and determine whether to institute and conduct a trial. The trial is then conducted before the same panel of APJs, which issues a final written decision on the merits.
Continue Reading USPTO Proposes Single APJ Pilot Program for IPR Institution
PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers
Acxiom Corp. v. Phoenix Licensing LLC (CBM2015-00068, Paper 23) presents a rare denial of a petition for covered business method review (as of June 25, 2015, CBM petitions are granted at a rate of over 70%). In denying the petition, the PTAB stressed that, to have standing, a petitioner must have been sued (or threatened with suit), or be a privy to a party that has been sued (or been threatened with suit). And “privy” in this context is synonymous with customer. In other words, suppliers have a right to step in for their customers with a CBM, but not the other way around.
Continue Reading PTAB Denies CBM Petition for Lack of Standing, Interpreting “Privies” as Customers and Not Suppliers
Dissent in SAP v. Versata: Federal Circuit Lacks Authority to Review
As reported earlier, the Federal Circuit recently affirmed the PTAB’s final written decision in SAP v. Versata, No. 2014-1194 (Fed. Cir. 2015), its first final written decision in a CBM review. As part of that decision, the Court determined that it had jurisdiction to determine whether the patent at issue was a “covered business method patent” within scope of the PTAB’s authority for a CBM review under Section 18 of the American Invents Act (“AIA”), and that such review by the Court was not precluded by 35 U.S.C. § 324(e), which provides that a decision to institute a CBM review is “final and nonappealable.”
Continue Reading Dissent in SAP v. Versata: Federal Circuit Lacks Authority to Review
PTAB Clarifies Meaning of Prior Art “Of Record” and “Known” In Context of a Motion to Amend – What Now?
In MasterImage 3D, Inc. v. RealD Inc., the Patent Trial and Appeal Board (PTAB) reaffirmed that the patent owner bears the burden of establishing the patentability of any amended claims proposed in an AIA trial over two categories of prior art: (a) the “prior art of record” and (b) “prior art known to the patent owner.” IPR2015-00040, Paper 42 (PTAB July 15, 2015). Nothing new there. What is new is the PTAB’s “clarification” of what constitutes such prior art:
Continue Reading PTAB Clarifies Meaning of Prior Art “Of Record” and “Known” In Context of a Motion to Amend – What Now?
Put Away The Blunderbuss – Attention to Detail and Thoroughness Are Needed in Preparing an IPR Petition
Boehringer Ingelheim filed three petitions attacking patents generally drawn to methods of treating RA patients with rituximab. The decisions on two of those petitions, i.e., IPR2015-00415 and IPR2015-00417, have been addressed elsewhere. In IPR2015-00418, the PTAB declined to institute an IPR on the petition’s challenges to the lone claim of U.S. Patent No. 8,329,172, drawn to a method of treating low-grade non-Hodgkins lymphoma (LG-NHL) with CVP tri-chemical chemotherapy and rituximab maintenance therapy.
Continue Reading Put Away The Blunderbuss – Attention to Detail and Thoroughness Are Needed in Preparing an IPR Petition