Pharma Patents Assigned to Indian Tribe to Thwart Inter Partes Review

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.

Federal Circuit Finds No Standing Requirement For Appellees

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.


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Fairness in Evaluation: Federal Circuit Remand to Board For Failure to Fully Consider Petitioner’s Arguments Against Motion to Amend

In Shinn Fu Company of America, Inc. et al. v. The Tire Hanger Corp., slip op. 2016-2250 (Fed. Cir. July 3, 1997) (non-precedential), the Federal Circuit reversed a Board’s decision granting a motion to amend claims challenged in IPR2015-00208.  During the IPR, Patent Owner Tire Hanger conceded that the original claims were unpatentable and filed a motion to add “human involvement to steps that an apparatus or other structure could have otherwise performed,” to the claimed method to “temporarily maintain a vehicle wheel during removal and reinstallation.” Id. at 3-5.  With its motion, Tire Hanger presented arguments that its newly substituted claims were patentable over the prior art upon which the Board had instituted trial and newly identified prior art references. Id. at 5.  Petitioner Shinn Fu opposed the motion, arguing that the substitute clams were obvious over the references identified by Tire Hanger, and two additional references: U.S. Patent No. 4,796,336 (“Curran”) and U.S. Patent No. 4.650,114 (“Conrad”). Id. at 5.  Continue reading this entry

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