News & Analysis as of

Inter Partes Review (IPR) Proceeding Patent Litigation Abuse of Process

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 PTAB Year in Review: Analysis & Trends – 2024 PTAB Case Highlights

Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more

Akin Gump Strauss Hauer & Feld LLP

USPTO Director Issues Second Sua Sponte Precedential Decision Addressing Abuse of Process

In the wake of her October 4, 2022 Precedential OpenSky decision, the United States Patent and Trademark Office Director Katherine Vidal issued another precedential decision further clarifying the actions that should be...more

Akin Gump Strauss Hauer & Feld LLP

USPTO Director Issues Sua Sponte Precedential Decision Addressing Abuse of IPR Process

In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues of first impression relating to sanctionable misconduct in inter partes...more

Jones Day

OpenSky – Director Finds Abuse Of Process

Jones Day on

In OpenSky Industries, LLC v. VLSI Technology LLC, Under Secretary of Commerce for Intellectual Property, Katherine Vidal, issued a precedential decision regarding OpenSky’s violation of the Director’s express order and...more

Foley & Lardner LLP

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

Foley & Lardner LLP on

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

McDonnell Boehnen Hulbert & Berghoff LLP

101 Patient Organizations Ask Congress to Curb IPR Abuse

Last month, in a letter to the Senate and House Committees on the Judiciary, 101 patient organizations expressed "concern[] that, as currently written, H.R. 9 [the Innovation Act] falls short of preserving important patent...more

Morrison & Foerster LLP

MoFo IP Newsletter - October 2015

The Survey Says: Tiffany Is Not Generic for A Ring Setting - Last month, the Southern District of New York granted summary judgment to Tiffany & Co. on its trademark infringement claim against Costco Wholesale...more

Morrison & Foerster LLP

A Win for Kyle Bass’s Hedge Fund as the PTAB Dismisses Celgene’s Sanctions Motions

The Patent Trial and Appeals Board (PTAB) dismissed Celgene Corporation’s (“Celgene”) motions for sanctions against the Coalition for Affordable Drugs (“the Coalition”). As we previously reported, the Coalition is an...more

Foley & Lardner LLP

PTAB Refuses To Sanction Kyle Bass

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Many pharmaceutical companies have complained about the IPR petitions filed by Kyle Bass and the Coalition for Affordable Drugs against Orange Book-listed patents covering approved pharmaceutical products, but Celgene Corp....more

Foley & Lardner LLP

PTAB Requests Additional Briefing on Hedge Fund IPR Questions: A Decision May Be Near

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On Sept. 1, 2015, the PTAB issued an order in Coalition for Affordable Drugs (CFAD) v. NPS Pharmaceuticals for the parties to brief the following questions in 7 business days...more

Foley & Lardner LLP

Kyle Bass Loses Round 1 of IPR Attack Against Pharma/Biotech Patents

Foley & Lardner LLP on

On August 24, 2015, the Patent Trial and Appeal Board (PTAB) declined institution of two petitions filed by Coalition For Affordable Drugs for Inter Partes Reviews (IPRs) of Acorda’s patents (U.S. Patent Nos: 8,007,826,...more

Foley & Lardner LLP

PTAB Denies Institution of Kyle Bass's Ampyra Patent Challenge

Foley & Lardner LLP on

The USPTO Patent Trial and Appeal Board (PTAB) has put an end to Kyle Bass’s Ampyra patent challenge, by denying institution of Inter Partes Review (IPR) proceedings. While many were hoping the PTAB would render a decision...more

Morrison & Foerster LLP

Celgene’s Pending Sanctions Motions against Kyle Bass’s Hedge Fund

The Patent Trial and Appeals Board (PTAB) previously authorized Celgene Corporation (“Celgene”) to move for sanctions against the Coalition for Affordable Drugs (“Coalition”), an entity affiliated with a Kyle Bass hedge fund...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Denies Inter Partes Review Petitions Against Two Acorda Patents

One of the statistics gleaned from Director Michelle Lee's recent blog on the post-issuance review provisions of the America Invents Act is that only 42% of inter partes review petitions have been granted over the past three...more

Foley & Lardner LLP

Will New PTAB Rules Impact IPRs Filed By Kyle Bass Hedge Fund?

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On August 19th, the USPTO released a new set of proposed rules related to post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Among the many offered rules was the addition of a “Rule 11-type certification”...more

Morrison & Foerster LLP

PTAB to Consider Motion for “Abuse of Process” Sanctions Against Kyle Bass Hedge Fund IPR Petition

In a recent order, the Patent Trial and Appeals Board (PTAB) indicated that it will consider a motion for sanctions based on a claim of “abuse of process” in Inter Partes Review (IPR) proceedings filed by the Coalition for...more

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