Inter Partes Review (IPR) Proceeding

News & Analysis as of

Lessons Learned from AIA Invalidity Proceedings in the Bio/Pharma Space

September 16, 2016, marked the fourth anniversary of the effective date for the invalidity proceedings before the Patent Trial and Appeal Board (PTAB or Board) created by the America Invents Act (AIA). These new AIA...more

PTAB Holds Oral Hearings In Tecfidera Patent IPR and Interference

On November 30, 2016, the USPTO Patent Trial and Appeal Board (PTAB) held oral hearings in two different inter partes proceedings involving the Biogen Tecfidera® patent with the latest expiation date. First, it heard...more

IPR Update -- Is Reviewability of Time-Bar Institution Decisions Headed En Banc?

"It appears to me that en banc consideration is warranted." -- Judge Taranto (concurring in Click-To-Call Technologies, LP v. Oracle Corp.). "I write separately, however, to note that I believe the Supreme Court's...more

Celgene Fights Back Against PTAB’s Determination of Unpatentability of Cancer-Related Patent Claims

On November 25, 2016, patent owner Celgene Corporation (“Celgene”) filed a Request for Rehearing in response to the Patent Trial and Appeal Board’s (PTAB) final written decision rendering unpatentable claims to U.S. Patent...more

Celgene Asks PTAB to Reconsider Adverse Final Written Decision

On October 27, 2016, the Patent Trial and Appeal Board (PTAB) issued four final written decisions invalidating claims of U.S. Patent No. 6,045,501 (“the ’501 Patent”) and U.S. Patent No. 6,315,720 (“the ’720 Patent”) covering...more

Perfect Surgical Techniques, Inc. v. Olympus America, Inc. (Fed. Cir. 2016)

Diligence is a patent concept whose applicability was severely restricted under the changes in U.S. patent law created under the Leahy-Smith America Invents Act. Diligence is important when determining whether an invention...more

PTAB Reverses Obviousness Finding After Remand

The Patent Trial and Appeal Board (PTAB or Board) reversed its previous decision invalidating claims of a patent covering a coaxial cable connector after the US Court of Appeals for the Federal Circuit found that the PTAB...more

Federal Circuit Broadly Affirms PTAB’s Determinations on Analogous Art, Motivation to Combine References and Obviousness of Claims

The level of deference the Federal Circuit gives to the Board’s IPR decisions has been surprising to many practitioners, considering the Court’s reputation for reversing district court decisions. The trend of deference to...more

PTAB Uses § 315(e)(1) Estoppel to Narrow IPR Scope

In two recent final written decisions (FWDs) rendered in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board (PTAB or Board) narrowed the scope of the proceedings by terminating the proceedings with...more

Patent Invalidity Offense: When Is District Court Action the Better Option Over IPR, PGR or CBM?

It’s Monday morning after the Thanksgiving holiday. Easing back into the workweek with the lingering effects of turkey, stuffing and a miraculous Ohio State victory still sapping my brain, I open the court docket report....more

Reconsideration of Institution Decisions Is Also “Final and Nonappealable”

In an opinion addressing whether a decision by the Patent Trial and Appeal Board (PTAB or Board) to reconsider a decision on institution is “final and nonappealable,” the US Court of Appeals for the Federal Circuit reaffirmed...more

District Court Orders Additional Claim Construction Briefing After Plaintiff Appeared to Argue a Different Position in Other...

After the district court conducted a claim construction hearing (but before it issued an order), the district court stayed the litigation between Finjan and Symantec pending a decision by the PTAB regarding whether to...more

Swearing Behind A Reference With Reasonably Continuous Diligence

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., the Federal Circuit vacated and remanded a USPTO Patent Trial and Appeal Board decision in an Inter Partes Review proceeding, finding that the PTAB imposed too...more

Alert: Federal Circuit Narrows the Types of Patents That Can Be Challenged in a Covered Business Method Review

In many ways, inter partes review (IPR) and covered business method (CBM) review are equivalent proceedings to challenge an issued patent efficiently. CBM proceedings have a key benefit in that they are not limited to...more

Federal Circuit Corrects the Board’s “Too Exacting” Diligence Standard

On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of...more

In re NuVasive Brings the Administrative Procedure Act to IPRs

NuVasive owns US 8,187,334, which claims certain spinal implants. Medtronic filed a petition challenging various claims of the ‘334 patent as obviousness over US 2002/0165550 (Frey) in view of US 5,860,973 (Michelson). ...more

Freedom to Operate and the Use of AIA Review

Freedom to Operate: •Identifying infringement risk •Third party patent (infringement) – claim searching –Timing •Discrete, continuous –Searching •In-house, search agency –Screening/analyzing •Ranking...more

PTAB Estoppel: Recent Guidance on What Grounds of Challenge “Reasonably Could Have Been Raised” in an Earlier Proceeding

The scope of estoppel under the America Invents Act is becoming clearer in view of recent Federal Circuit and Patent Trial and Appeal Board (PTAB) decisions. As discussed in our earlier article, the Federal Circuit has...more

Biotechnology Innovation Organization's Amicus Brief for In re Aqua Products, Inc.

On Friday, December 9, 2016, the Federal Circuit will hear oral arguments en banc in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR proceedings. ...more

PTAB Post-Grant Fees Slated To Increase

The USPTO recently announced a proposed new fee schedule in a Notice of Proposed Rulemaking (NPRM) in search of revenue to recover its projected $3 billion aggregated operating costs for the 2017 fiscal year. If enacted, it...more

Failure to Let Patent Owner Address Unpatentability Arguments Relied on by the Board Violates Administrative Procedures

The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same...more

Federal Circuit Weighs in on Evidentiary Challenge in IPR, Reversing PTAB

More often than not, evidentiary issues in IPR proceedings fail to make headlines because the Board will structure its Final Written Decision to avoid evidentiary challenges. Findings that a party’s motion to exclude is...more

Federal Circuit Rejects Patentee’s Effort to Narrow Claim Scope

One wrinkle of IPR practice is that patentees are often in the position of advocating a narrower claim scope than the challenger — just the opposite of what is usually seen in district court litigation. The narrowing...more

Stay pending IPR is granted

Stark, C. J. Defendants’ motion to stay pending IPR is granted. The disputed technology is “emulsion PCR.” On July 6, 2016 the PTO decided to institute IPR proceedings as to every claim at issue in this litigation. The...more

In re NuVasive, Inc. (Fed. Cir. 2016)

The Federal Circuit remanded a final written decision of the Patent Trial and Appeal Board ("PTAB" or "Board") because the Board invalidated certain claims in a patent without providing adequate notice or opportunity to the...more

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