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Timing Is Everything: Successful Joinder Motions At The PTAB

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The joinder provisions of inter partes review (IPR) proceedings can be a great tool to circumvent the 1-year IPR filing deadline following service of a complaint for infringement. However, grant of a joinder petition by the Patent Trial and Appeal Board (PTAB) requires recognition that the Board is loath to delay a final hearing date … Continue reading this entry

En Banc Federal Circuit To Review Standards for Amending Claims During AIA Proceedings

CAFC
In a rare grant of a petition for rehearing en banc, the court decided that an appeal “warrants en banc consideration” of who bears what burden when amending in an IPR.  In re: Aqua Products, No. 15-1177, slip op. at 2 (Fed. Cir. August 12, 2016).  From the very beginning of IPRs, the Patent Trial and Appeal … Continue reading this entry

Supreme Court Accepts 1st IPR Appeal: Cuozzo Could Mark Turning Point for Patent Owners

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Yesterday the Supreme Court granted certiorari in Cuozzo Speed v. Lee, which represents the first time the high Court will address an AIA proceeding, in this case an IPR decision. Based on the questions presented in the petition for certiorari, the case is likely to have a broad impact on post-grant proceedings. The Court will … Continue reading this entry

Proposed Rule Changes For IPR Appeals

CAFC
On December 3, 2015, the Federal Circuit issued a notice of proposed changes to its Rules of Practice, many of which relate to IPR practice under the AIA. Copies of the proposed revisions is found here and the court’s summary of the revisions can be found here. Some of the proposed changes impact the manner … Continue reading this entry

Several hedge fund-linked IPR Petitions Instituted: PTAB Finds No Abuse of Process

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Following a string of denials, the PTAB has recently instituted IPR against several pharmaceutical patents where the petitions were filed by entities linked to hedge funds. Prior to these recent institution decisions, there were open questions of whether the PTAB would deny such petitions on the basis of abuse of the IPR process. See “PTAB … Continue reading this entry

Kyle Bass Loses Round 1 of IPR Attack Against Pharma/Biotech Patents

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On August 24, 2015, the Patent Trial and Appeal Board (PTAB) declined institution of two petitions filed by Coalition For Affordable Drugs for Inter Partes Reviews (IPRs) of Acorda’s patents (U.S. Patent Nos: 8,007,826, 8,663,685) covering Ampyra, a billion-dollar drug for treating multiple sclerosis. Coalition For Affordable Drugs – Petitioner The Petitioner, Coalition For Affordable Drugs, is a … Continue reading this entry

Federal Circuit Answers Questions About Covered Business Method Review Proceedings

In Versata Development Group, Inc. v. SAP America, Inc., the Federal Circuit outlined the permitted extent of judicial review of Covered Business Method (CBM) patent review proceedings conducted by the USPTO Patent Trial and Appeal Board (PTAB). While the court held that it has jurisdiction to review PTAB determinations that underlie decisions to institute CBMs and CBM decisions … Continue reading this entry