Inter Partes Review Proceedings

News & Analysis as of

Mintz Levin Convinces The Federal Circuit To Completely Reverse And Remand An Adverse IPR Final Written Decision For The First...

Mintz Levin has won extraordinary relief for its client, Straight Path IP Group, Inc., convincing the Federal Circuit to completely reverse and remand an IPR final written decision adverse to a patent owner for the first...more

District Court Lifts Stay Pending Inter Partes Review ("IPR") after the USPTO Declined to Institute Review on Two of the Three...

The district court had previously stayed all proceedings in the pending an IPR. The district court issued the stay because the USPTO proceedings had the potential to resolve the validity of most of the claims in the...more

Federal Circuit Issues Second Reversal in Favor of a Patent Owner

The Federal Circuit has picked up the pace of issuing actual written opinions regarding PTAB decisions, instead of its previous, steady diet of Rule 36 Judgments. Today, the Court issued its second opinion reversing a Board...more

Federal Circuit Sends Verinata Patent Back to PTAB – The Import of Background Prior Art In Supplying The Requisite Motivation To...

On November 16, 2015, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (PTAB, also the “Board”) inter partes review (“IPR”) decision holding that a prior art reference, though not identified as an...more

3 Years of Inter Partes Review – By The Numbers

Welcome to Harness Dickey’s Report on Litigation Practice before the United States Patent Office. Created by the America Invents Act, Inter Partes Review proceedings have already changed the face of patent litigation. Lower...more

Considerations for Submission of Experimental Evidence to the Patent Trial and Appeal Board

Experimental evidence can be a powerful tool in succeeding in an inter partes review proceeding, particularly in the case where inherent properties of prior art are at issue. As indicated by the requirements of 37 C.F.R. §...more

Two Recent CAFC Opinions Closely Scrutinize PTAB IPR Decisions Upholding Claim Validity For Legal Error

Two opinions that came down this month illustrate the CAFC’s close scrutiny of potential legal errors in PTAB Final Written Decisions.  These decisions underline the benefits of appellants focusing their arguments on legal...more

Belden Inc. v. Berk-Tek LLC (Fed. Cir. 2015)

Do you want the good news or the bad news first? Well, the good news is that the Federal Circuit has begun reversing PTAB decisions on the merits for IPR proceedings. To be fair, in the Microsoft case, the Federal Circuit...more

District Court Administratively Terminates Motion to Dismiss Because of Pending Inter Partes Reviews ("IPRs")

In this patent infringement action, Watson Laboratories, Inc.'s ("Watson") moved to dismiss several counts of the complaint filed by Jazz Pharmaceuticals, Inc. and Jazz Pharmaceuticals Ireland Limited (collectively, "Jazz")....more

PTAB Holds Claims Invalid That Were Held To Be Not Invalid In Litigation Appeal

The Patent Trial and Appeal Board recently held claims in two separate patents to be invalid that were previously held to be not invalid in a litigation appeal. In separate inter partes review proceedings, the PTAB held that...more

Federal Circuit Issues Second Reversal in an Inter Partes Review Finding the PTAB’s Obviousness Analysis to Contain “Legal Errors”...

On November 3, 2015, the Federal Circuit issued Belden Inc. v. Berk-Tek LLC1, a rare precedential opinion reversing a determination by the Patent Trial and Appeal Board (PTAB) in an inter partes review proceeding. This is...more

Board Offers New Technique to Solve an Often-Raised IPR Issue

One panel of the PTAB has introduced a technique that may help solve the oft-raised complaint that a reply brief from Petitioner contains new evidence and/or argument not raised in the Petition. In early decisions, when this...more

PTAB May Allow a Petitioner to Correct An Improper IPR Reply Brief

Last week, the Federal Circuit explained that the Patent Trial and Appeal Board did not err when it allowed a petitioner to revise its Inter Partes Review Reply brief after first cautioning the petitioner that the PTAB may...more

PTAB Says: Abuse of Process and Improper Use Discovery is Moot in Denial of IPR Petition

In a recent decision on yet another inter parties review petition brought by billionaire hedge-fund manager Kyle Bass through one of his Coalition for Affordable Drugs entities, the PTAB denied institution of an IPR against...more

Lessons Learned from a Rare CAFC Opinion on an IPR Matter

To date, the Federal Circuit has issued Rule 36 affirmances in over 80% of the cases it has heard. Thus, when a new, substantive opinion is issued by the Court, it is an opportunity to learn. On November 5th, the Federal...more

Estoppel in the Context of Inter Partes Review Proceedings - Apotex Inc. v. Wyeth LLC

The Patent Trial and Appeal Board (PTAB or Board) interpreted the estoppel provision of 35 U.S.C. § 315(e)(1) to deny institution of inter partes review in a second petition by the same petitioner against the challenged...more

PTAB to Purchasers: “Caveat Emptor” - Esselte AB v. DYMO B.V.B.A.

In a decision to institute inter partes review (IPR) in four separate but related matters, the Patent Trial and Appeal Board (PTAB or Board) found that the patent owner failed to provide sufficient support for its contention...more

Threshold for Institution Is Preponderance of Evidence - Nestlé Purina Petcare Co. v. Oil-Dri Corp. of America

In a decision denying the patent owner’s request for rehearing, the Patent Trial and Appeal Board (PTAB or Board) explained that when instituting an inter partes review (IPR) on obviousness grounds, a petitioner must only...more

Can’t Run Away from Your Expert’s Testimony: Board Says Testimony from Another Proceeding Admissible - Edmund Optics, Inc. v....

Addressing the admissibility of testimony from prior proceedings, the U. S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) denied the petitioner’s motion to exclude the prior testimony of its own...more

Don’t Let Protective Orders Trip Up Your IPR Strategy

The PTAB recently addressed what is a common – but unnecessary – problem created by a protective order issued in a parallel Federal District Court litigation. In B/E Aerospace Industries, LLC v. MAG Aerospace Industries,...more

A Closer Look at Dynamic Drinkware, LLC v. National Graphics, Inc.

Last week, we analyzed the Federal Circuit's Dynamic Drinkware, LLC v. National Graphics, Inc. case from early September. In that case, the Federal Circuit held that an IPR petitioner did not adequately demonstrate that an...more

Federal Circuit Clarity on Key IPR Issues May Be on the Way

We are entering an interesting phase in the development of inter partes review proceedings as more and more of the contours of these proceedings are being heard by the Federal Circuit. To date, the Federal Circuit has made...more

No Review of PTAB Determination to Not Institute an IPR, Again - Achates Reference Publishing, Inc. v. Apple, Inc.

Addressing a decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) to not institute inter partes review IPR proceedings, the U.S. Court of Appeals for the Federal Circuit concluded...more

Federal Circuit: Prior Disclosure Is Not Necessarily Prior Art - Dynamic Drinkware v. National Graphics

The U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB or Board), finding that an IPR petitioner failed to meet its burden of proving that a cited prior art U.S. patent reference...more

Phigenix v Genentech; Claims Found Not Unpatentable In Final Written Decision

On October 27, the PTAB issued a Final Written Decision in an IPR challenging claims 1-8 of US Patent 8,337,856, directed to immunoconjugates comprising an anti-ErbB antibody, such as the humanized anti-ErbB2 antibody known...more

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