Tag Archives: Standing

Patent Interferences May Not Involve Pure AIA Patent

thumbnail image of DNA strandBy Sandip H. Patel on Posted in Biotechnology, Ex Parte, Interferences, Reexamination
The Patent Office is not supposed to issue separate patents for the same invention to competing inventors. Several statutory provisions empower the Office to reject pre-AIA patent application claims of the later inventor. But sometimes it’s not clear who is the later inventor. Those provisions are therefore unhelpful. So, the Patent Trial and Appeal Board … Continue Reading

Estoppel May Not Apply When Petitioner Lacks Standing to Appeal IPR Decision

By Michael R. Weiner on Posted in Appeals, Estoppel
In AVX Corp. v. Presidio Components, Inc., No. 2018-1106 (Fed. Cir. May. 13, 2019), the Federal Circuit determined that a manufacturer did not have standing to appeal an adverse decision in an IPR challenging a competitor’s patent, because the petitioner did not have a present or nonspeculative interest in engaging in conduct arguably covered by … Continue Reading

One Year Time Bar Runs from Date of Service, Regardless of Whether Suit is Dismissed

By Julianne M. Hartzell on Posted in Inter Partes Review, IPR, Trial Procedures
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

CAFC Hears IPR Appeal From Parties That Were Time-Barred From Filing Petition

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Inter Partes Review, IPR, Joinder
Research Corporation Technologies, Inc. (RCT) sued Mylan Pharmaceuticals, Inc. (Mylan), Breckenridge Pharmaceutical, Inc. (Breckinridge), and Alembic Pharmaceuticals Ltd. (Alembic), in federal district court, accusing them of infringing United States Reissued Patent No. RE38,551. The patent claims pharmaceutical compositions useful in the treatment of epilepsy and other central nervous system disorders. Within one year of being … Continue Reading

PTAB’s Time Bar Determinations Are Reviewable by the Federal Circuit

By Sandip H. Patel on Posted in Institution / Denial, Inter Partes Review
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

Enactment of the STRONGER Patents Act Would Severely Limit PTAB Proceedings

By Sharon M. Sintich, Ph.D. on Posted in Amendments, Appeals, Discovery, Estoppel, Institution / Denial, Inter Partes Review, IPR, Legislation, Post Grant Review, Real Party-in-Interest, Stays, Trial Procedures
The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate.  The Act is an updated version of the STRONG Patents Act of 2015 that stalled in Congress.  Like its predecessor, the STRONGER Patents Act is designed to significantly modify the AIA trial … Continue Reading

Federal Circuit Dismisses Appeal where IPR Petitioner Lacked Standing to Appeal

By Jennifer Burnette on Posted in Appeals, Inter Partes Review, IPR
In Phigenix, Inc. v. ImmunoGen, Inc., No. 2016-1544 (Fed. Cir. Jan. 9, 2017), the Federal Circuit dismissed, for lack of standing under Article III of the Constitution, a petitioner-appellant’s (Phigenix) appeal of a PTAB final written decision that refused to cancel claims challenged in an IPR. The court’s decision demonstrates that statutory right of appeal … Continue Reading

Petitioner Not Time-Barred By Service of COFC Complaint

By Ryan J. Schermerhorn on Posted in Institution / Denial, Inter Partes Review, IPR, Post Grant Review
Neither the Federal Circuit nor the PTAB has provided much guidance concerning the proper application of the one-year time-bar for filing IPRs when privity is alleged.  Recently, however, in AM General LLC v. UUSI, LLC, Case IPR2016-01049, Paper 14 (PTAB November 7, 2016), the PTAB has provided some guidance. On May 18, 2016, Petitioner AM … Continue Reading

Federal Circuit Again Refuses to Review PTAB’s Application of the Time Bar to AIA Petitions

By Sandip H. Patel on Posted in Discovery, Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

The Possibility of Inconsistent Results Inherent to Congress’s Design of AIA Trial Reviews

By Sandip H. Patel on Posted in Estoppel, Institution / Denial, Inter Partes Review, IPR, Joinder, Legislation, Trial Procedures
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 … Continue Reading

For CBM Standing, Is “Incidental To” a Financial Product or Service Enough?

By Marshall Gerstein on Posted in Covered Business Method, Institution / Denial
If a patented mobile phone app can locate a nearby ATM machine, are the claims of that patent subject to CBM review because ATMs are used in financial transactions? What if the claim could cover a business entity that, incidentally, might also push advertisements to a mobile phone? Is it enough that a claim is … Continue Reading

PTAB Provides Procedural Guidance with Five Precedential Opinions

By Marshall Gerstein on Posted in Amendments, Discovery, Real Party-in-Interest, Trial Procedures
Update: The Supreme Court issued a decision on April 20, 2020  holding that the patent statute (35 U.S.C. § 314(d)) bars judicial review of a PTAB decision of whether an inter partes review petition is time-barred pursuant to 35 USC 315(b). As stated by the Court, the PTAB’s “application of §315(b)’s time limit, we hold, is … Continue Reading

PTAB Denies Institution of Two IPR Petitions Filed by Hedge Fund

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest, Sections 102/103
As the patent community anxiously awaits the PTAB’s decision concerning whether the Coalition For Affordable Drugs (CFAD) should be sanctioned for filing an IPR petition against a Celgene patent¹, the PTAB recently denied institution of two IPR petitions² the CFAD filed concerning two Acorda patents that cover Ampyra, a billion-dollar drug for treating multiple sclerosis.  The … Continue Reading

Suppliers Can Lack Standing to Seek CBM Review on Behalf of Customers

By Thomas L. Duston on Posted in Covered Business Method, Institution / Denial
In several recent decisions, the PTAB has clarified the standing required to file petitions seeking Covered Business Method review.  Under the AIA, standing to seek Covered Business Method review is limited to those charged with infringement and their “privies.”  “Privies,” however, do not encompass merely any party with whom the petitioner is in “privity.”  “Privies” … Continue Reading

Is the Coalition for Affordable Drugs Abusing the IPR Process?

By Julianne M. Hartzell on Posted in Institution / Denial, Inter Partes Review, Legislation, Real Party-in-Interest, Sections 102/103
The PTAB granted leave on June 9 for the patent owner, Celgene Corporation, to file a motion for sanctions seeking dismissal in several IPRs¹ filed by the Coalition for Affordable Drugs. The Coalition for Affordable Drugs, an organization created by the hedge fund Hayman Credes Master Fund L.P., has filed multiple IPRs against pharmaceutical companies with … Continue Reading
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