News & Analysis as of

Inter Partes Review (IPR) Proceeding

PTAB Declines to Vacate Final Written Decision in Inter Partes Review Despite Settlement

by Morgan Lewis on

Settling an inter partes review after a final written decision by the Patent Trial and Appeal Board may not result in the PTAB vacating the decision....more

In Rare Decision, PTAB Grants Request for Rehearing, Reverses its Prior Decision, and Institutes IPR

Requests for rehearing at the Patent Trial and Appeal Board (the “Board”) are not uncommon; however, the Board rarely grants them. One reason for this result is the high standard applied to reverse a prior decision—abuse of...more

Massachusetts Court Finds Shaw Decision Forecloses Any Estoppel Beyond the Grounds That Were Instituted in an IPR, Despite Policy...

by Knobbe Martens on

The court in Koninklijke Philips N.V. v. Wangs All. Corp., No. 14:cv-12298, 2018 WL 283893 (D. Mass. Jan. 2, 2018) denied summary judgement of no invalidity, finding that the Federal Circuit’s holding in Shaw forecloses a...more

Accused Infringer Estopped from Asserting Prior Art Disclosed in Invalidity Contentions

In an order issued on April 4, 2018, Judge Lynn granted plaintiff ZitoVault’s motion for summary judgment under 35 U.S.C. 315(e)(2), holding that defendant IBM is estopped from asserting invalidity defenses based on prior art...more

PTAB Institutes IPR Despite Petitioner’s Prior Invalidity Challenge in Declaratory Judgment Action, Citing “Unambiguous Language”...

On August 1, 2016, Canfield Scientific, Inc. filed a civil action in the District of New Jersey against Melanoscan, LLC, seeking a declaratory judgment of non-infringement of U.S. Patent No. 7,359,748 (“the ’748 Patent”). In...more

Despite Change in Motion to Amend Practice by Aqua Products, PTAB Orders Scope of Remand to be Limited to Federal Circuit’s...

by Knobbe Martens on

In an IPR on remand from the Federal Circuit on appeal of a motion to amend, the PTAB considered the scope of briefings of the parties in view of the Federal Circuit’s recent en banc decision Aqua Products v. Matal. The PTAB...more

Top Developments in Hatch-Waxman Litigation for April 2018

by Morrison & Foerster LLP on

This month, we highlight several significant cases including Celgene Corp. v. Hetero Labs Ltd. and Regeneron Pharmaceuticals, Inc. v. Merus N.V. as well as new legislation proposed in both houses of Congress with respect to...more

Luitpold Pharmaceuticals, Inc. v. Pharmacosmos A/S (Fed. Cir. 2018)

Which parties to an IPR proceeding have standing to either appeal or participate in an appeal from an adverse final written decision by the Board? The Federal Circuit had previously held that a petitioner that did not...more

Absolute Intervening Rights: A Silver Lining to Thwarted Post-Grant Challenges

by Jackson Walker on

When faced with allegations of patent infringement, many defendants elect to challenge the validity of certain issued patents using the various post-grant proceedings available with the United States Patent & Trademark Office...more

Judge Oetken Lifts Stay on 1 of 5 IPR’ed Patents

On April 5, 2018, Judge Oetken (S.D.N.Y.) granted Plaintiff Rovi Guides Inc.’s (“Rovi”) motion to lift a stay related to U.S. Patent No. 8,122,034 (“the ’034 patent”), only one of five patents at issue in a case that was...more

Have Cake, Eat Cake: Declaratory Judgment Strategy For Accused Infringers

by Jones Day on

The AIA prohibits institution of a post-grant proceeding when the petitioner previously “filed a civil action challenging the validity of a claim of the patent.” 35 U.S.C. § 315(a)(1). PGR petitions (including CBM petitions)...more

IPR Updates Relating to Adalimumab and Rituximab

by Goodwin on

Last week, the Patent Trial and Appeal Board (“Board”) instituted inter partes review of two patents directed to methods of administering adalimumab for the treatment of psoriasis, based on petitions filed by Sandoz:...more

Federal Circuit Review - March 2018

by Knobbe Martens on

Distribution Agreements Can Constitute Offers for Sale Under Section 102(b) - In The Medicines Company v. Hospira, Inc., Appeal Nos. 2014-1469, 2014-1504, the Federal Circuit held that a distribution agreement qualified as...more

Knowles Electronics LLC v. Iancu

by Knobbe Martens on

Federal Circuit Summaries - Before Newman, Clevenger, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: The USPTO has standing to intervene to defend its decision, even when the requestor has...more

PTAB Gives Apple’s Foe A Second Bite By Granting Realtime Data’s Motion to Amend

by Pepper Hamilton LLP on

In an inter partes review (IPR) proceeding, a patent owner may file one motion to amend the patent in one or more of the following ways: (a) cancel any challenged patent claim, or (b) for each challenged claim, propose a...more

Due Process Trumps Validity Concerns in AIA Trials

In Dell Inc. v. Acceleron, LLC, the Federal Circuit held that a panel of the Patent Trial and Appeal Board (PTAB) correctly declined to consider the petitioner’s new argument on remand, even though the panel previously found...more

PTAB Institutes Its First Derivation Trial: Andersen Corp. v. GED Integrated Solutions, Inc.

Under the America Invents Act, the Patent Trial and Appeal Board has been busy handling inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) proceedings. Petitioners have filed...more

Immunex Files Reply In Support of Motion To Stay Dupixent® Patent Litigation

by Goodwin on

In the ongoing Immunex v. Sanofi patent litigation regarding Immunex’s claims of infringement against Sanofi and Regeneron’s Dupixent® (dupilumab) product, Immunex has filed a reply brief in support of its motion to stay the...more

Northern District of California Enforces Forum Selection Clause in License Agreement and Orders Licensee to Withdraw IPR Petitions

On March 23, 2018, a district court judge issued a preliminary injunction requiring the defendants to withdraw their petitions for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). The court granted...more

Win or Go Home? Standing to Appeal PTAB Decisions Upholding Patentability to the Federal Circuit Before Submitting a Biosimilar...

Biosimilar developers have been aggressive in filing petitions for inter partes reviews (IPRs) of biologics patents before the Patent Trial and Appeal Board (PTAB), many of them preceding the filing of a marketing...more

Federal Circuit PTAB Appeal Statistics – March 2018

by Finnegan – AIA Blog on

Through March 15, 2018, the Federal Circuit decided 329 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 248 (75.38%) cases, and reversed or vacated the PTAB on every issue in 36...more

How the PTAB and Federal Circuit Have Responded to Aqua Products

The patent bar watched the en banc rehearing decision in Aqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), with great interest. This was because the lack of availability to amend claims in an inter partes review...more

Collateral Estoppel Applies in IPRs Where the Issues are the Same

In Nestle USA, Inc. v. Steuben Foods, Inc., [2017-1193] (March 13, 2018), the Federal Circuit vacated the Board’s construction of “aseptic” in U.S. Patent No. 6,481,468 because of collateral estoppel considerations, and...more

Put All Your RPIs on the Table: Petitioner Bears Burden to Prove List of Real-Parties-in-Interest Is Correct

by McDermott Will & Emery on

The Patent Trial and Appeal Board (PTAB) signaled the importance of responding to discovery related to a petitioner’s real-parties-in-interest and privies (RPIs), reiterating that while the burden of production related to...more

No Second Chance on Remand for Late Arguments

Dell Inc. v. Acceleron, LLC (“Dell II”), No. 2017-1101 (Fed. Cir. Mar. 9, 2018) - On Tuesday, the Federal Circuit issued a precedential decision affirming the Board’s refusal to consider new arguments that had been made...more

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