Are State-Owned Patents Immune From IPRs Under The Eleventh Amendment?

In separate non-precedential decisions issued by three different panels, the PTAB has permitted state university patent owners to invoke the Eleventh Amendment in Inter Partes Review proceedings. Each panel found that IPR proceedings are subject to a sovereign immunity defense, but one panel permitted the IPR to proceed with only the non-university patent owner. Continue reading this entry

Supreme Court Grants Cert In SAS To Decide Required Scope Of PTAB Decision

On May 22, 2017, the Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, where it has been asked to decide whether the PTAB is statutorily required “to issue a final written decision as to every claim challenged by the petitioner.” The Court’s decision will be important to IPR petitioners and patent owners alike, and could impact the scope of IPR proceedings, the PTAB’s ability to complete them within the statutory time period, and–indirectly–the scope of estoppel that could arise from an IPR proceeding. Continue reading this entry

Key Trends In Pharmaceutical IPRs Filed By Generic Petitioners

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 filings by fourteen (14) of the most active generic petitioners among the world’s top-20 generic drug companies.  This study updates and expands findings from our earlier survey of this subgroup (see the June 2016 post here on PTAB Trial Insights).  Detailed findings are presented in Fig. 1 below, as well our key findings in the following sections.  One surprising trend revealed by this survey is a high institution rate (75%) against pharmaceutical patents, well above the average for all technologies. Continue reading this entry

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

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, removing more effective petitions from the pool that would otherwise be instituted (“Does Spike In IPR Settlements Signify Petitioner Success?”).  Another factor that may contribute to the decline in institution rates at the PTAB is petitioner errors, including failure to establish that prior art is publicly accessible (assuming evidence existed that could have been submitted to show the reference was publicly accessible), failure to file within the one-year time limit after petitioner is served with a complaint, and failure to identify the real party in interest. Continue reading this entry

2017 Mid-Year Statistics Point to Continued Rise in IPR Petitions

March 31st marked the mid-point of the PTAB’s fiscal year and the release of mid-year statistics on AIA proceedings.  The full report of the mid-year statistics is found here.  One interesting trend is a continued increase in overall number of IPR petitions (mid-year there are 996 IPR petitions compared to a total of 1565 for all of last fiscal year, which represents a 27% increase in filings if the same number are filed in the second half of the year). Continue reading this entry

Federal Circuit Again Reverses PTAB Obviousness Determination

In what is becoming a familiar basis for reversal of PTAB decisions, the Federal Circuit yet again reversed the PTAB for its failure to adequately explain the basis for combining multiple prior art references in support of its conclusion of obviousness in Personal Web Technologies, LLC v. Apple, Inc.  Specifically, the Federal Circuit (Taranto, Chen, Stoll) found that “Board did not adequately support its findings that the prior art disclosed all elements of the challenged claims and that a relevant skilled artisan would have had a motivation to combine the prior-art references to produce the claimed [] inventions with a reasonable expectation of success,” reversing the conclusion of obviousness and remanding it to the PTAB for further proceedings. Continue reading this entry

CAFC Upholds Preliminary Injunction Despite Unpatentability Ruling of PTAB

This week in Tinnus Enterprises LLC v. Telebrands Corp. (Moore, Wallach and Stoll), the Federal Circuit upheld the grant of a preliminary injunction by the Eastern District of Texas, despite a PTAB Final Written Decision finding the claims at issue to be indefinite.  While the petitioner’s failure to directly raise the PTAB’s grounds as a basis to deny the preliminary injunction may have partially contributed to the outcome, it also appears that the Federal Circuit will not always give deference to the PTAB when it disagrees with their findings. Continue reading this entry

Federal Circuit Finds IPR Petitioner Lacks Standing To Appeal

Yesterday in Phigenix, Inc. v. Immunogen, Inc., the Federal Circuit held that petitioner Phigenix lacked standing to appeal an adverse final written decision in an IPR.  While acknowledging that the AIA permits a party without Article III standing to file an IPR, the Federal Circuit confirmed that the AIA does not eliminate the need for an appellant to the Federal Circuit (an Article III Court) to have standing in the form of “an injury that is both concrete and particularized”.  The court found insufficient evidence to show such an “injury-in-fact” on the part of Phigenix, and so it dismissed the appeal. Continue reading this entry

Reduced Scope of Post-IPR Estoppel Imperils Litigation Stays

In Depomed, Inc. v. Purdue Pharma LP et al., 3-13-cv-00571 (NJD November 4, 2016, Mem. Op. Dkt. 238) (Bongiovanni, MJ), the Court analyzed and applied recent Federal Circuit decisions limiting the scope of post-IPR estoppel under 35 U.S.C. § 315(e) to only those claims and grounds subject to a final written decision from the PTAB.  However, the Court acknowledged the frustrations of the Patent Owner regarding the diminished “simplification of issues” achieved by the IPRs given the limited estoppel effect, and signaled that such outcomes may weigh against future stays pending an IPR. Continue reading this entry

PTAB Post-Grant Fees Slated To Increase

The USPTO recently announced a proposed new fee schedule in a Notice of Proposed Rulemaking (NPRM) in search of revenue to recover its projected $3 billion aggregated operating costs for the 2017 fiscal year. If enacted, it would be the Office’s most significant fee adjustment since March 2013. The Office is proposing to increase 205 existing patent and PTAB fees.  There are also 42 new fees being introduced or replacing one of the 14 fees that are being discontinued. The proposed changes will likely take effect October 1, 2017, the beginning of the Office’s next fiscal year. The Office is accepting public comments until December 2, 2016.  Continue reading this entry