LexisNexis® Legal Newsroom
Statutory Estoppel For IPR Petition Misses?

Unsuccessful IPR Petitioner Urges Expansive PTAB Estoppel In a strange twist, an unsuccessful IPR petitioner is currently urging the CAFC to adopt an expansive interpretation of statutory estoppel for Inter Partes Review (IPR). That is, the petitioner argues where only a subset of claims challenged...

Backflow to Add to Growing PTAB Workload

Rehearing Requests & CAFC Remands to Tax PTAB Resources As discussed on Tuesday, sometimes the Court of Appeal for the Federal Circuit (CAFC) will find it necessary to remand an appeal to the Patent Trial & Appeal Board (PTAB) . Likewise, sometimes the Solicitor will seek remand in appropriate...

Managing an Inter Partes Review Tidal Wave: The PTAB’s Administrative Approach to the Zond IPRs

by Michelle Carniaux and Michael E. Sander What does a patent owner do when they are facing 125 petitions for inter partes review in a single year? How does the Board properly handle proceedings with nearly a dozen petitioners, with overlapping arguments and prior art? When we last wrote about...

Impact of Requests for Rehearing on Overall IPR Pendency

Trial Section Outpaces PTAB Average As discussed previously, the PTAB is experiencing a filing rate of 150+ AIA trial petitions per month (184 last month alone). This includes petitions for Inter Partes Review (IPR), Post Grant Review (PGR) and Covered Business Method challenges (CBM). The Board's...

Record AIA Petitions Filed with PTAB in October

October Brings 195 AIA Patent Challenge Petitions to PTAB Post-grant, patent challenge mechanisms of the America Invents Act (AIA) continue to surge in popularity. Inter Partes Review (IPR) and Covered Business Method (CBM) patent challenges have been pouring into the Patent Trial & Appeal Board...

Amendment Efforts at PTAB Trend Downward

Multiple Factors Drive Downtrend in Amendments at PTAB Post-issuance amendment of patents has never been popular among patentees. This is because such amendments typically trigger an intervening rights defense that bars the collection of past damages from accused infringers. That is, if the amended...

Proposed Amended Complaint Not Served Under IPR Statute 315(b)

PTAB Designates Decision as Informative on 315(b) Question Petitioners seeking Inter Partes Review (IPR) must be mindful of the statutory bar of 35 U.S.C. § 315(b). This provision precludes IPR on any patent once 12 months have elapsed after service of a complaint alleging infringement of that...

Product Manuals vs. Products: Breadth of IPR Estoppel

Court Sheds Light on "Reasonably Could Have Raised" IPR Estoppel The petitioner estoppel provision of Inter Partes Review (IPR), 35 U.S.C. § 315(e)(2), precludes a petitioner from asserting invalidity in a subsequent litigation or ITC action "on any ground that the petitioner raised...

Big Win for Butamax as PTAB Knocks Out All Claims of Gevo Patent

Previous posts (e.g., here and here ) discussed various threads of the major biofuels patent litigation between BP-DuPont joint venture Butamax and the advanced biofuels company Gevo . A relatively new mechanism for challenging the validity of a U.S. patent is inter partes review (IPR), an administrative...

PTAB Crashers: A Who’s Who of Non-Practicing IPR Petitioners

by Michelle Carniaux and Michael E. Sander Although IPR proceedings were intended to provide those accused (or at risk of being accused) of patent infringement a faster and less costly proceeding to challenge the validity of a patent, it has also drawn the attention of outsiders. There are several...

PTAB Considers "Could Have Been Raised" Estoppel

New Decision Explores 315(e)(1) Estoppel Today, the Patent Trial and Appeal Board (PTAB) added the recent Decision on Institution rendered in Dell, Inc. v. Electronics and Telecomms. Res. Inst ., IPR2015-00549 Decision Denying Institution, Paper 10, Mar. 26, 2015, to the list of Representative...

First Hedge Fund Filing Moves to PTAB Decision

First Hedge Fund IPR Ready for PTAB Institution Decision Earlier this week, Acorda Therapeutics filed its response to the first of the now notorious hedge fund IPR filings in (IPR2015-00720). In its response ( here ), Acorda points out that unnamed investors are directly funding the filing, yet remain...

Senate Moves to Derail Gains of America Invents Act

Patent Act Rewritten to Appease Bio/Pharma Lobby In a surprising change of course, the Senate bill known as the ' The Patent Act" (S.1137) has morphed into a PTAB reform bill. The initial version of the Bill hardly touched the patentability trials of the USPTO's Patent Trial & Appeal...

PTAB Considers Unplugging Hedge Fund Filings

Hedge Fund IPR Scheme Unraveling Last week, the USPTO's Patent Trial & Appeal Board (PTAB) authorized a Motion for Sanctions in four IPR proceedings filed by the now infamous Kyle Bass & friends. The motion for sanctions will be based on an alleged abuse of process by Bass & Co. for...

Is RPI/Privity an Issue of PTAB Standing?

CAFC Finds Board Has Power to Vacate Institution Decision Sua Sponte The Patent Trial & Appeal Board (PTAB) posed the following question to the public last summer in its Request for Comments : Real Party in Interest: 5. Should a patent owner be able to raise a challenge regarding a real party...

PTAB Cheat Sheet for House Bill

[UPDATE: Given the burgeoning opposition to the "Innovation Act" (H.R. 9) , the current bill was pulled from floor consideration this morning. Back to the drawing board. As to at least the PTAB changes, the focus can now appropriately turn to the imminent rule package of the agency. USPTO...

Beginning of the End for Kyle Bass & Friends

Motion for Sanctions Details True Hedge Fund Motives On Wednesday, Celgene filed its Motion for Sanctions against the Coalition for Affordable Drugs in IPR2015-01092, 1096, 1002, and 1103. The Patent Trial and Appeal Board (PTAB) now has until October 28th to decide the issue. As I have maintained...

Patent Reexamination Speed Presents New Opportunity

Improved Speed For Overlooked Post-Grant Patent Options Once upon a time, patent reexamination was the only mechanism to challenge a U.S. patent at the USPTO. First introduced as an ex parte proceeding in the 1980s, patent reexamination was expanded to include an inter partes option in 1999. Thereafter...

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

by Stephen B. Maebius Yesterday, the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules...

PTAB Issues Rule Long Awaited Rules Package

Expected Changes to Patentee Preliminary Response Among Noteworthy Changes The USPTO has now published its promised Patent Trial & Appeal Board (PTAB) Rule Package (advance copy here ). The proposed changes are largely expected given the d iscussion coming out of the agency for months on these...

Kyle Bass Now 0-3 at PTAB With More Pain to Come

Patents in the Unpredictable Arts No Easy IPR Mark Back in January of last year Kyle Bass introduced himself to the patent community through a series of brash, public pronouncements on a perceived lack of quality in drug patents . His stated intention was to "knee cap" drug companies by...

Proposed PTAB Rule Change May Backfire on Some Patentees

Patentees Back Themselves Into a Corner at PTAB Both patentees and challengers alike were displeased with inter partes patent reexamination prior to the America Invents Act (AIA). Inter partes patent reexamination was too slow to serve as a true alternative to litigation for patent challengers, and...

PTAB Denies Sanctions in Hedge Fund Filings

Board Finds Profit Motive Acceptable for IPR While all hedge fund filings considered by the PTAB to date have failed on the merits ( Kyle Bass is 0-3 & Ferrumo Capital 0-1), today, the Board declined to outlaw such filings as a matter of policy. In IPR2015-01092, 1096, 1002, and 1103, Patentee...

CAFC Finds 315(b) Bar to IPR Not Reviewable on Merits Appeal

315(b) Bar is Not an Ultimate Issue of PTAB Authority to Invalidate Back in July, the Court of Appeal for the Federal Circuit (CAFC) determined that a question of CBM eligibility was excepted from the appellate review bar for PTAB institution determinations . The exception for CBM eligibility was...

Kyle Bass Finally Gets an IPR Instituted

PTAB Finds IPR Filing of Hedge Fund Has Merit Yesterday, in IPR2015-00988, the Patent Trial & Appeal Board (PTAB) instituted review of Cosmo Technologies patent 7,773,720. The patent is directed to controlled release oral pharmaceutical compositions containing 5-amino salicylic acid, also known...