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

Timing Is Everything: Successful Joinder Motions At The PTAB

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 once it has a scheduling order in place. 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 made, there is still more change to come, as the USPTO seeks to establish the right balance between petitioners and patent owners. 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 construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.”  State university patent owners who have availed themselves of the remedies offered by infringement litigation in federal courts, have still been able to use the sovereign immunity shield of the 11th Amendment to prevent other suits against them challenging validity of their patents (see “Critics Take Aim At Califorinia’s Patent Shield”).  While the use of state sovereign immunity as a shield in patent litigation is not new, this appears to be the first instance of it being asserted as a defense in an IPR or AIA proceeding.  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 the Petitioner explained how the new references were missed by the first search.  In addition, the PTAB further denied institution using its discretion under 35 U.S.C. § 325(d) because the unpatentability grounds were essentially the same as in the earlier petition, although additional references were included. Continue reading this entry

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

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 Board has required the patent owner to bear the burden on a motion to amend.  Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027 (PTAB June 11, 2013).  That is, when a patent owner during an IPR filed a motion to amend its claims, the Board required the patent owner to prove the patentability of its amended claims.  Id.  That requirement might soon change.  Continue reading this entry

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

Yesterday, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner based upon the Board’s institution decision.  In particular, the CAFC found that Cuozzo’s prohibition of appealing institution decisions does not prevent patent owners from appealing a final written decision based on a failure to establish prima facie obviosuness, even though the final written decision rests upon an institution decision that was not challenged in a request for rehearing on such basis. Continue reading this entry