On Feb. 23, 2018, the Patent Trial and Appeal Board (“Board”) ruled an assertion of Tribal sovereign immunity would not avoid challenges to certain patents that had been assigned to the Saint Regis Mohawk Tribe (“the Tribe”). See Mylan Pharm., Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127, Paper No. 130 (February 23, 2018). In our earlier post entitled “Pharma Patents Assigned to Indian Tribe to Thwart Inter Partes Review” we reported that certain Orange Book-listed patents had been assigned to the Tribe, which licensed the patents back to the original assignee, in an effort to obtain dismissal of the pending inter partes reviews (“IPRs”) against those patents. Continue reading this entry
Obtaining a remand on an appeal from the Patent Trial & Appeal Board (PTAB) is of course a win for the Patent Owner, but may result in an ultimate loss when the case is revisited at the PTAB. The Feb. 12, 2018 Federal Circuit opinion, In Re Hodges, No. 2017-1434, (Fed. Cir. Feb. 12, 2018), highlights the importance of anticipating appellate review when developing the IPR record and choosing response strategies during patent prosecution to put the Patent Owner in the best position possible for a full reversal of the PTAB’s decision rather than a remand. Continue reading this entry
In Maxlinear, Inc. v. CF CRESPE, LLC, slip op. 2017-1039, the Federal Circuit remanded to the Patent Trial and Appeal Board (“Board”) an inter partes review (“IPR”) proceeding to evaluate the patentability of certain dependent claims, where the unpatentability of their respective independent claims had been previously affirmed by the Federal Circuit. The fact pattern leading to this result is particularly informative.
The IPR that was the subject of the Maxlinear appeal is IPR2017-00592 (“the ‘592 IPR”), in which the Board upheld patentability of claims 1-4, 6-9, and 16-21 of U.S. Patent No. 7,075,585 (“the ‘585 patent”). Id. at 2. Appellant Maxlinear, Inc. (“Maxlinear”) only sought review of the Board’s decision as to dependent claims 4, 6-9, and 20-21. Id. Continue reading this entry
2017 was a year for the record books at the Patent Trials and Appeal Board (PTAB), which has included newly created standard operating procedures from the PTAB, a landmark en banc ruling from the Court of Appeals for the Federal Circuit impacting amendment practice, and a series of informative decisions from PTAB impacting multiple proceedings against the same patent. Continue reading this entry
In Arthrex, Inc. v. Smith & Nephew, Inc., et al., slip op. 2017-1239, the Federal Circuit affirmed the Board’s decision to enter an adverse judgment following Patent Owner’s disclaimer of all claims challenged in an inter partes review petition before the institution of trial. At the time of entering the adverse judgment, an estoppel effect attached which precluded Patent Owner from “taking action inconsistent with the adverse judgment, including obtaining in any patent … [a] claim that is not patentably distinct from a finally refused or canceled claim.” Id. at 3 (citing 37 C.F.R. § 42.73(d)(3)(i)). Continue reading this entry
In a case of first impression, an expanded PTAB panel (including Chief APJ Ruschke) found that a parallel enforcement action by a patent owner waives its sovereign immunity defense against under the 11th Amendment an AIA petition in Ericsson v. Regents of the University of Minnesota. The expanded panel first affirmed its earlier decisions finding that sovereign immunity will prevent an IPR from proceeding against a patent owner who has not waived the defense. In this particular case, however, the patent owner “waived its Eleventh Amendment immunity by filing an action in federal court alleging infringement of the patent being challenged in this proceeding.” Continue reading this entry
In Mylan v. Allergan (IPR2016-00127, Paper No. 73), the PTAB granted a rare request for discovery filed be Petitioner in response to summaries of data presented in a Patent Owner Response used to rebut obviousness. In particular, the PTAB found that the Garmin factors for analyzing discovery requests weighed in favor of granting Petitioner’s motion. However, the decision only granted the requested discovery in part, and the PTAB’s reasoning as to what it granted and what it denied may be instructive in other situations. Continue reading this entry
Today in Aqua Products, Inc. v. Matal, a fractured Court of Appeals for the Federal Circuit (CAFC) sitting en banc decided to flip the burden of persuasion onto petitioners in IPR proceedings to show that an amendment is not patentable, removing from patent owners the burden previously placed upon them by the PTAB. In its conclusion, the court states as follows:
“The only legal conclusions that support and define the judgment of the court are: (1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that burden on the patentee.”
As we have previously reported, sovereign immunity of state universities (who are instruments of state government) has been used to avoid IPRs under the immunity clause of the US Constitution (“Sovereign Immunity of State Universities: Can It Shield Them From AIA Patent Challenges?” and “Are State-Owned Patents Immune From IPRs Under The 11th Amendment?“). Now, a pharmaceutical company announced that it has assigned certain Orange Book listed patents to a native American Indian tribe, which licensed the patents back to the pharmaceutical company, in an effort to obtain dismissal of the pending IPRs against those patents. The Indian tribe will receive a significant up-front fee and annual royalties during the life of the patents. See “A Native American Tribe, A Drugmaker, and an Unusual Patent Plan.” Motions to dismiss in the IPRs have not yet been filed based on the transfer of ownership, but the article reports that the new assignee intends to file such motions in the IPRs. We will report again after the PTAB rules in these cases.
In Personal Audio LLC v. Electronic Frontier Foundation, the Federal Circuit ruled that an IPR petitioner does not need to satisfy Article III standing requirements in order to participate in a patent owner’s appeal from a Patent Trial and Appeal Board decision in an IPR proceeding. This ruling on appellee standing complements the decision in Phigenix v. Immunogen finding that an IPR petitioner did not have standing to appeal.
Any opinions expressed in this article are personal to the author and do not reflect the views of Foley & Lardner LLP, its partners, or its clients.