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Federal Circuit Again Reverses PTAB Obviousness Determination

In what is becoming a familiar basis for reversal of PTAB decisions, the Federal Circuit yet again reversed the PTAB for its failure to adequately explain the basis for combining multiple prior art references in support of...more

Federal Circuit Finds IPR Petitioner Lacks Standing To Appeal

On January 9, 2017, in Phigenix, Inc. v. Immunogen, Inc., the Federal Circuit held that petitioner Phigenix lacked standing to appeal an adverse final written decision in an IPR. While acknowledging that the AIA permits a...more

Sovereign Immunity of State Universities: Can It Shield Them from AIA Patent Challenges?

In what appears to be a case of first impression, the PTAB is poised to rule on the question of whether state sovereign immunity prevents an IPR challenge from being maintained against a University of Florida (“UF”) patent...more

Estoppel Prevents Second IPR Petition Even When New References Were Missed By First Search

In a case that appears to be a case of first impression, the PTAB found in its decision denying institution in IPR2016-00781 that a final written decision in an earlier IPR created estoppel under 35 U.S.C. § 315(e)(1),...more

Keeping Up To Date On CRISPR – July 2016

CRISPR is a gene editing technique that promises to revolutionize genetic engineering, but already is raising ethical, business, and legal issues. This is the first in a monthly series of articles on CRISPR. ...more

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

On July 25, 2016, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner...more

Survey of Pharmaceutical IPRs Filed By Generic Drug Company Petitioners

We have reviewed a sub-group of 111 IPRs filed by generic drug companies against pharmaceutical patents to assess outcomes and trends. While our survey was not intended to capture every IPR filed by a generic drug company, it...more

Reading The Cuozzo Tea Leaves: Best Practices Pending The Supreme Court's Decision

The Supreme Court of the United States heard oral argument today on claim construction in inter partes review (IPR) proceedings and the reviewability of institution decisions. On the claim construction issue, the Justices...more

Guarding Against Conclusory Statements & Why It Matters Even More Under The New PTAB Rules

A common deficiency highlighted in recent PTAB decisions denying institution of an IPR petition is that an expert declaration offers only “conclusory” statements in relation to one or more key aspects of the alleged ground of...more

The New AIA Rules May Help Patent Owners Avoid Trial

On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply “to all AIA petitions filed on or after the effective date and to any ongoing AIA...more

USPTO Releases New Rules For AIA Post-Grant Proceedings

On March 31, 2016, the USPTO released its long-awaited package of rules for AIA post-grant proceedings. The final rules largely track the proposed rules (see “USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings” to...more

Patent Due Diligence: All That Glitters May Not Be PTAB Gold

An obvious but sometimes overlooked item when conducting patent due diligence is to check for PTAB proceedings (CBM, IPR, or PGR). Although the Patent Application Information Retrieval System (PAIR) does show whether patents...more

PTAB Institutes Kyle Bass IPR Against Pharmaceutical Patent Based On SEC Document

Kyle Bass has filed numerous prior IPR petitions against pharmaceutical patents, some of which have been denied due to use of prior art references that were not sufficiently proven to be “publicly accessible” (see “Clinical...more

The Latest Twist In The Apple v. VirnetX IPRs: Appeals Court Issues Temporary Stay

On March 7, 2016, the Federal Circuit issued a temporary stay to permit briefing by the parties on the question of whether the PTAB properly ruled that Apple could use the joinder process in Mangrove Capital’s IPR against...more

VirnetX Faces Follow-on IPR Petition from a Different Petitioner After Settling Previously Instituted IPR

In IPR2014-00614, Microsoft filed a petition for IPR against US Patent No. 7,418,504 (“the ‘504 patent) owned by VirnetX, which was instituted based upon anticipation grounds over Kiuchi (see institution decision). This IPR...more

CAFC Partially Relaxes IdleFree Requirements for Amendments During IPR

On February 11, 2016, in Nike v. Adidas (Fed. Cir. 2016), the Federal Circuit partially relaxed the hurdle for a patent owner to amend claims during an IPR or other AIA proceeding. This follows the PTAB’s own earlier partial...more

High Stakes Race Between Apple and VirnetX: Will PTAB Trump The Texas Jury's Award of $326.5M?

A Texas jury today raised the stakes even higher in a race involving parallel proceedings between the PTAB and Texas district court when it found that Apple infringed the VirnetX patents and awarded to VirnetX $625.6M in...more

Supreme Court Accepts 1st IPR Appeal: Cuozzo Could Mark Turning Point for Patent Owners

On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed v. Lee, which represents the first time the high Court will address an AIA proceeding, in this case an IPR decision. Based on the questions presented...more

Federal Circuit Backs PTAB Decision Curtailing A Party's Use Of "Supplemental" Information

In Redline Detection v. Star Envirotech, the Federal Circuit confirmed that the PTAB can decline to consider timely filed “supplemental” information from a petitioner (after filing its petition) pursuant to 37 C.F.R. §...more

Federal Circuit Confirms Constitutionality of IPR Proceedings

On December 3, 2015, in MCM Portfolio LLC v. Hewlett-Packard Co., a panel of the Federal Circuit unanimously upheld the constitutionality of IPR proceedings, finding that delegation of patent invalidity determinations to a...more

Use of Priority Denial to Subject Apparent "Pre-AIA" Patents to PGR: Inguran v. Premium Genetics

A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority date after March 16,...more

Federal Circuit Affirms PTAB's IPR Decision Invalidating A Pharmaceutical Patent

On December 17, 2015, in Merck v. Gnosis, the Federal Circuit affirmed the PTAB’s IPR Decision finding a pharmaceutical patent invalid for obviousness. Justice Newman vigorously dissented from the majority’s view (Justices...more

Proposed Rule Changes For IPR Appeals

On December 3, 2015, the Federal Circuit issued a notice of proposed changes to its Rules of Practice, many of which relate to IPR practice under the AIA... Some of the proposed changes impact the manner by which appeals from...more

Several hedge fund-linked IPR Petitions Instituted: PTAB Finds No Abuse of Process

Following a string of denials, the PTAB has recently instituted IPR against several pharmaceutical patents where the petitions were filed by entities linked to hedge funds. Prior to these recent institution decisions, there...more

Estoppel Versus Discretion: How is the PTAB Deciding Multiple Petitions Against the Same Patent?

The PTAB has denied petitions filed by the same petitioner against the same claims, even where the subsequent petition relied upon completely different prior art (IPR2014-00506), reasoning that a petitioner should not hold...more

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