Category Archives: PTAB Decisions

Subscribe to PTAB Decisions RSS Feed

New informative order providing guidance on motions to amend

In view of the Federal Circuit Decision in Aqua Products, the PTAB has de-designated as precedential MasterImage 3D, Inc. v. RealD Inc., Case IPR2015-00040 (PTAB July 15, 2015) (Paper 42) and has de-designated as informative Idle Free Sys., Inc. v. Bergstrom, Inc., Case IPR2012-00027 (June 11, 2013) (Paper 26).  As a replacement, Western Digital Corp. … Continue reading this entry

SAS Institute: One Month In

We are now a little over a month since the Supreme Court issued its decision in SAS Institute v. Iancu, where the Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged.”  As previously reported, the PTAB issued  Guidance … Continue reading this entry

SAS Institute: Two Weeks In

As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged.”  The primary significance of SAS is its impact on … Continue reading this entry

Board Rules that Tribal Immunity is Unavailable to Avoid Inter Partes Review Challenge

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 … Continue reading this entry

PTAB -A Year In Review of 2017

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 … Continue reading this entry

Federal Circuit: Effect of Disclaimer Prior to Trial Institution

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 … Continue reading this entry

Expanded PTAB Panel Finds Sovereign Immunity Waived By Patent Enforcement

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 … Continue reading this entry

PTAB Grants Rare Request for Additional Discovery In IPR

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 … Continue reading this entry

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 … 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

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 … 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 … 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.  … Continue reading this entry

Seeking Balance: A Review of the First 4 Years of the PTAB

Looking back on the major developments that have shaped AIA proceedings over the first four years, three sources have contributed to changes: (1) rulemaking, (2) informative decisions by the PTAB, and (3) key appellate decisions of the US Supreme Court and the Court of Appeals for the Federal Circuit.  While a number of improvements have been … Continue reading this entry

Sovereign Immunity of State Universities: Can It Shield Them from AIA Patent Challenges?

In what appears to be a case of first impression, the PTAB is poised to rule on the question of whether state sovereign immunity prevents an IPR challenge from being maintained against a University of Florida (“UF”) patent (IPR2016-01274).  Under the 11th Amendment to the Constitution, “[t]he Judicial power of the United States shall not be … Continue reading this entry

Estoppel Prevents Second IPR Petition Even When New References Were Missed By First Search

In a case that appears to be a case of first impression, the PTAB found in its decision denying institution in IPR2016-00781 that a final written decision in an earlier IPR created estoppel under 35 U.S.C. § 315(e)(1), preventing a second IPR petition from being instituted that used additional references which reasonably could have been raised before, even though … Continue reading this entry

PTAB Holds Technical Difficulties Will Not Save Late-Filed IPR Petitions

The PTAB recently stood firm in denying a petitioner’s motion to change the filing dates of two IPR petitions that missed a statutory deadline by less than ten minutes. Case IPR2016-00281 and IPR2016-00282 (Patents 8,603,514 B2 and 8,017,150 B2). The petitioner, Teva Pharmaceuticals USA, Inc., was facing a 1-year statutory IPR filing deadline of December … Continue reading this entry

Survey of Pharmaceutical IPRs Filed By Generic Drug Company Petitioners

We have reviewed a sub-group of 111 IPRs filed by generic drug companies against pharmaceutical patents to assess outcomes and trends.  While our survey was not  intended to capture every IPR filed by a generic drug company,  it does cover the most active generic company filers to date (see Fig. 2 below).  Examining this particular group … Continue reading this entry

Reading The Cuozzo Tea Leaves: Best Practices Pending The Supreme Court's Decision

The Supreme Court of the United States heard oral argument today on claim construction in inter parte review (IPR) proceedings and the reviewability of institution decisions (a copy of the petition for certiorari is reported at “Supreme Court Accepts 1st IPR Appeal: Cuozzo Could Mark Turning Point for Patent Owners”). On the claim construction issue, … Continue reading this entry

Guarding Against Conclusory Statements & Why It Matters Even More Under The New PTAB Rules

A common deficiency highlighted in recent PTAB decisions denying institution of an IPR petition is that an expert declaration offers only “conclusory” statements in relation to one or more key aspects of the alleged ground of unpatentability. For example, in a decision denying institution in IPR2016-00011, the PTAB commented that “Dr. Harrigan’s opinion in this … Continue reading this entry

Patent Due Diligence: All That Glitters May Not Be PTAB Gold

An obvious but sometimes overlooked item when conducting patent due diligence is to check for PTAB proceedings (CBM, IPR, or PGR). Although the Patent Application Information Retrieval System (PAIR) does show whether patents have been subjected to reexamination (by clicking on the “continuation” tab of a file displayed in PAIR), whether or not a patent … Continue reading this entry

PTAB Institutes Kyle Bass IPR Against Pharmaceutical Patent Based On SEC Document

Kyle Bass has filed numerous prior IPR petitions against pharmaceutical patents, some of which have been denied due to use of prior art references that were not sufficiently proven to be “publicly accessible” (see “Clinical Trials as Prior Art: PTAB Denies Bass IPR With Only A “Hope” Of Efficacy”). However, in IPR2015-01850, the PTAB instituted … Continue reading this entry

The Latest Twist In The Apple v. VirnetX IPRs: Appeals Court Issues Temporary Stay

On March 7, 2016, the Federal Circuit issued a temporary stay to permit briefing by the parties on the question of whether the PTAB properly ruled that Apple could use the joinder process in Mangrove Capital’s IPR against VirnetX to avoid the one-year bar that prevents a litigation defendant like Apple from filing its own … Continue reading this entry

VirnetX Faces Follow-on IPR Petition from a Different Petitioner After Settling Previously Instituted IPR

In IPR2014-00614, Microsoft filed a petition for IPR against US Patent No. 7,418,504 (“the ‘504 patent) owned by VirnetX, which was instituted based upon anticipation grounds over Kiuchi (see institution decision).  This IPR later settled, and the PTAB granted termination before a final written decision.  Yesterday, a new entity (Black Swamp IP, LLC) filed a petition … Continue reading this entry