News & Analysis as of

Inter Partes Review (IPR) Proceeding

Magistrate Judge Recommends IPR Estoppel Bar of Prior Art References

A magistrate judge in the Eastern District of Texas recommended in Biscotti, Inc. v. Microsoft Corp., No. 2:13-CV-01015, DI 191 (E.D. Tex. May 11, 2017) that Microsoft should be estopped from asserting invalidity grounds that...more

Secondary Considerations Carry The Day

by Jones Day on

We have previously reported (on February 1, on March 1, and on March 30) how patent owners have seen a mixed bag of results in trying to convince PTAB panels that secondary considerations of non-obviousness were sufficient to...more

Inter Partes Reexamination May Proceed Even If The Requester Has a Change-of-Heart

In In re AT&T Intellectual Property II, LP, No. 16-1830 (Fed. Cir. May 10, 2017), the Federal Circuit held that the Board did not exceed its statutory authority when instituting an inter partes reexamination because a request...more

Federal Circuit Expands Scope of Prosecution Disclaimer to IPR Proceedings

In its opinion in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit expanded the scope of prosecution disclaimer to statements made by a patent owner during Inter Partes Review (IPR) proceedings. The Court explained...more

PTAB Grants Joinder of Time-Barred Petitioner to IPR after Settlement with Original Petitioner

The PTAB granted joinder of a time-barred petitioner to an IPR trial after the patent owner settled its dispute with the original petitioner in AT&T Services, Inc. v. Convergent Media Solutions, LLC, IPR2017-01237, Paper 10...more

Be Careful What You Wish For: Federal Circuit Says Statements Made During IPR Can Limit Scope of Patent

by K&L Gates LLP on

The Federal Circuit on May 11, 2017, addressing the question for the first time, held that statements made by a patent owner during inter partes review (“IPR”) proceedings before the Patent Trial and Appeal Board (“PTAB”) can...more

Fish Client Coherus BioSciences Prevails in ‘135 IPR Decision

by Fish & Richardson on

REDWOOD CITY, Calif., May 16, 2017 (GLOBE NEWSWIRE) — Coherus BioSciences, Inc. (Nasdaq:CHRS), announced that the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office ruled in favor of Coherus’...more

Federal Circuit Extends Prosecution Disclaimer to IPR Proceedings

by Morgan Lewis on

The Federal Circuit recently held as a matter of first impression that statements made by a patent owner during an IPR proceeding can be considered for claim construction and relied upon to support a finding of prosecution...more

Patent Owner’s Statements in IPR May Constitute a “Disclaimer” of Claim Scope in Litigation

In Aylus Networks, Inc. v. Apple Inc., No. 16-1599 (Fed. Cir. May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be...more

Are Inter Partes Review Proceedings Constitutional? The Federal Circuit Is Not Yet Ready To Decide

by Jones Day on

On May 11, 2017, with six of its twelve active judges authoring or joining separate opinions, the Federal Circuit denied a petition for an initial hearing en banc which asked the full Court to address the question “whether a...more

PTAB: No Estoppel Because A Skilled Searcher Could Not Have Found Company Brochures

In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more

Key Trends In Pharmaceutical IPRs Filed By Generic Petitioners

by Foley & Lardner LLP on

We reviewed a sub-group of two hundred and four (204) IPRs filed by generic drug companies against pharmaceutical patents to assess PTAB outcomes and key trends in dealing with this technology field. The survey captured IPR...more

PTAB Finds Abbvie’s Humira Patent Unpatentable

by Goodwin on

The PTAB has issued a Final Written Decision in IPR2016-00172, filed by Coherus, finding Abbvie’s U.S. Patent 8,889,135 unpatentable as obvious over the prior art. The ‘135 patent is directed to methods of treating rheumatoid...more

Statements Made In IPR Preliminary Responses May Trigger Later Prosecution Disclaimer

by Brooks Kushman P.C. on

In a case of first impression, the U.S. Court of Appeals for the Federal Circuit has held that a patent owner’s statements made in a preliminary statement during an AIA inter partes review (IPR) proceeding may create...more

Court Narrows Invalidity Case Through IPR Estoppel, but Federal Circuit’s Shaw Decision Keeps Some Arguments Alive

The Federal Circuit’s decision in Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016) raised the possibility that the inter partes review (IPR) estoppel of 35 U.S.C. § 315(e) might not do much...more

PTAB Provides Another Estoppel Datapoint — No Estoppel for Petitioner Using Its Own Documents

In Inter Partes Review (IPR) proceedings, the estoppel provision of 35 U.S.C. § 315(e)(1) prevents the petitioner from challenging the validity of a patent in an IPR on any “ground that the petitioner raised or reasonably...more

District Court Precludes Defendant from Asserting Invalidity Grounds That It Raised or Could Have Reasonably Raised in IPR...

On May 11, 2017, Magistrate Judge Roy Payne in the Eastern District of Texas recommended that patentee Biscotti’s inter partes review (IPR) estoppel motion be granted–in-part and denied-in-part....more

PTAB Life Sciences Report - May 2017 #2

About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Mylan Pharmaceuticals, Inc. v. Cosmo Technologies Ltd. PTAB Petition: IPR2017-01034; filed...more

In Case of First Impression, Federal Circuit Rules that a Patent Owner’s Statements in an IPR Proceeding Can Create Prosecution...

by BakerHostetler on

In Aylus Networks, Inc. v. Apple Inc., Appeal No. 2016-1599 (Fed. Cir. May 11, 2017), the Federal Circuit ruled that a patent owner’s statements during an inter partes review (IPR), even if before an institution decision, can...more

Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer

by Jones Day on

In Aylus Networks, Inc. v. Apple, Inc., No. 16-1599 (Fed. Cir. May 11, 2017) (“Federal Circuit Op.”), the Federal Circuit affirmed the district court’s decision that Apple did not infringe Aylus’s patents. See Aylus Networks,...more

Is The Real IPR Institution Rate Higher When Petitioner Errors & Pre-Institution Settlements Are Considered?

by Foley & Lardner LLP on

We have previously noted that the increasing rate of pre-institution settlement may in part be responsible for the declining institution rate in IPR proceedings because stronger petitions may drive earlier settlements,...more

Patent Owner Comments During an IPR Can Lead to Prosecution Disclaimer — Even for Non-Instituted Claims

The doctrine of prosecution disclaimer prevents patent owners from recapturing specific meanings of claim terms that were disclaimed during prosecution. See, e.g., Omega Eng’g, Inc. v. Raytek Corp., 334 F.3d 1314, 1323 (Fed....more

En Banc Federal Circuit Poised To Decide Important Question Concerning PTAB Appeals

by Jones Day on

The en banc Federal Circuit is currently considering whether the PTAB’s findings regarding 35 U.S.C. § 315(b)’s one year bar on IPR petitions can be reviewed on appeal. In Wi-Fi One v. Broadcom Corp, the en banc Court is set...more

IPR Estoppel Update: District Courts are Questioning the Reasoning of Shaw But are Compelled to Follow It

Challenging the validity of a patent in an inter partes review (IPR) or post-grant review (PGR) does not come without risk. If the petitioner is unsuccessful in proving that the challenged claims of a patent are...more

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