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
Gamble At Your Own Risk – The Danger Of Petition Overkill
Boehringer Ingelheim filed the petition at issue in IPR2015-00417 concurrently with the petitions at issue in IPR2015-00415 and IPR2015-00418 to challenge patents protecting methodologies for treating rheumatoid arthritis (RA) with rituximab, an FDA-approved antibody for treating certain cancers. The IPR2015-00417 petition specifically challenged the fourteen claims of U.S. Patent No. 7,976,838, which are drawn to methods of administering rituximab to RA patients not responding to TNF-α inhibitors, a subset of RA patients. The PTAB instituted an IPR of two of the 19 obviousness grounds contained in the petition. Given the number, and nature, of grounds to be reviewed, and the outcome, it is apparent that the more grounds found in a petition, the greater the chance that the best arguments will be lost in the shuffle.
Continue Reading Gamble At Your Own Risk – The Danger Of Petition Overkill
Grinning Patentees Get A Mulligan
Filed concurrently with the petitions at issue in IPR2015-00417 and IPR2015-00418, Boehringer Ingelheim filed the petition at issue in IPR2015-00415 seeking review of U.S. Patent No. 7,820,161 owned by Genentech and Biogen Idec. The Board’s institution decision steadily whittled down Boehringer’s varied attacks on the patent. Ultimately, IPR was granted on 2 of the 36 obviousness grounds in the petition (additional grounds were summarily denied for failure to identify the ground with particularity), with the two surviving grounds implicating half of the 12 claims of the ‘161 patent.
Continue Reading Grinning Patentees Get A Mulligan
PTAB Denies Petitioner’s Request to Terminate IPR Two Months After Institution Decision
The PTAB denied a Petitioner’s request for authorization to file a motion to terminate an IPR without a final written decision, made only two months after the Board issued a decision instituting the IPR. Masterimage 3D, Inc. v. Reald Inc., Case IPR2015-00035, Paper No. 30 (June 25, 2015).
After institution of an IPR but before the Patent Owner had filed a response, the Petitioner Masterimage 3D, Inc. sought permission to request adverse judgment and termination of the IPR, to avoid the estoppel effects of a final written decision. The Patent Owner opposed this request, on the basis that it desires the Petitioner to be bound by estoppel effects of a final written decision under 35 U.S.C. § 315(e); and because the Patent Owner may file a motion to amend in the proceeding.
Continue Reading PTAB Denies Petitioner’s Request to Terminate IPR Two Months After Institution Decision
Will Anyone Succeed on a Request for Rehearing of a Final Written Decision?
Although parties continue to file Requests for Rehearing of the PTAB’s Final Written Decision, none have yet succeeded in changing the outcome. According to Docket Navigator (www.docketnavigator.com), to date, 19 motions for rehearing of the Final Written Decision have been filed. Only one, in McLinton Energy Group, LLC v. Magnum Oil Tools International, Ltd., IPR 2013-00231, has been granted. Unfortunately for the patent owner in that case, although the request for rehearing was granted and the Board agreed to reconsider its Final Decision, it ultimately declined to make any modification.
Continue Reading Will Anyone Succeed on a Request for Rehearing of a Final Written Decision?
Footnote on Claim Amendment More Interesting than Federal Circuit Holding?
Last Tuesday, for the first time ever, the Federal Circuit reversed the PTAB in an IPR decision by, among other things, ratcheting back the “broadest reasonable construction” standard for claim construction by declaring the PTAB’s construction “unreasonable.” 
The Court said that, “[e]ven under the broadest reasonable interpretation, the board’s construction ‘cannot be divorced from the specification and the record evidence,’ and ‘must be consistent with the one that those skilled in the art would reach.’” Microsoft v. Proxyconn, 2014-1542, -1543 (Fed. Cir. June 16, 2015) (“A construction that is ‘unreasonably broad’ and which does not ‘reasonably reflect the plain language and disclosure will not pass muster’”) (internal citations omitted).
Continue Reading Footnote on Claim Amendment More Interesting than Federal Circuit Holding?
Evidence of Denial of IPR Institution Allowed in District Court Infringement Action
On June 19, 2015 the District Court for the Middle District of Florida denied Defendants’ motion in limine requesting the exclusion of evidence relating to a denial of an IPR institution from the Patent Trial and Appeal Board (Stoneeagle Services, Inc. v. Pay-Plus Solutions, Inc. et al, 8-13-cv-02240 (FL MD)). This decision contradicts recent decisions in other jurisdictions in which the results of IPR decisions have not been allowed in District Court actions (see Interdigital Commc’ns, Inc. v. Nokia Corp., No. 13-10-RGA,2014 WL 8104167 (D. Del. Sept. 19, 2014) and Ultratec, Inc. et al. v. Sorenson Communications, Inc., No. 3:13-CV-00346 (W.D. Wisc. Oct. 8, 2014 ).
Continue Reading Evidence of Denial of IPR Institution Allowed in District Court Infringement Action
Patent Dispute Reform Legislation Is Now Pending in Both Houses of Congress
The House of Representative’s Innovation Act, H.R. 9, was voted to the House floor for further consideration on June 11, by a 24-8 vote of its Judiciary Committee, after the Senate’s PATENT Act, S. 1137, was voted to the Senate floor on June 4 by a 16-4 vote of its Judiciary Committee. See prior entry, “PTAB Review Reform in Bill Approved by Senate Committee.” Both bills target abusive litigation tactics and post-grant proceedings, IPRs and PGRs.
Notably, amendments were introduced to H.R. 9 to prevent the types of IPRs filed by Kyle Bass-type hedge funds for monetary gain, and to permit the patent owner to support its preliminary response with new declaration evidence.
Continue Reading Patent Dispute Reform Legislation Is Now Pending in Both Houses of Congress
Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend
Update: Overruled in part byAqua Products, Inc. v. Matal.
Earlier this week, we wrote about the post-hearing briefing the Federal Circuit invited in Microsoft Corp. v. Proxyconn, Inc., Case Nos. 2014-1542, -1543, Dkt. 49 (Fed. Cir. Apr. 13, 2015), and the questions it posed regarding the PTAB’s administration of inter partes review. The court issued its decision in that case yesterday, answering some of the questions it posed and, for the first time, reversed a PTAB claim construction, vacated the PTAB’s decision of unpatentability, and remanded the IPR for further proceedings.
Continue Reading Federal Circuit Upholds PTAB’s Application of its Rules to Decide Motions to Amend