Tag Archives: aia

Federal Circuit Finds IPR Petitioner Lacks Standing To Appeal

CAFC
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 … Continue reading this entry

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

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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?

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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

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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

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

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

CAFC
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 … Continue reading this entry

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

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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

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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

USPTO Releases New Rules For AIA Post-Grant Proceedings

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Today the USPTO released its long-awaited package of rules for AIA post-grant proceedings. The final rules largely track the proposed rules (see “USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings” to compare them), although they contain one surprise. Overall, the new rules may reduce the number of instituted IPRs and AIA proceedings by adding a … Continue reading this entry

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

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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

Denying Prior Art Status In PTAB Proceedings: Petitioner's Failure to Show Section 112 Support in Priority Applications May Be Fatal

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Several of our recent posts have discussed petitioners’ use of priority denial to attack patents with intervening prior art, but the issue of adequate support in an earlier filed application may also work in reverse against the petitioner when the prior art relied upon is a published patent application or granted patent with multiple filing … Continue reading this entry

Use of Priority Denial to Subject Apparent "Pre-AIA" Patents to PGR: Inguran v. Premium Genetics

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A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority date after March 16, 2012, to the post-grant review (PGR) process. By arguing that at least one claim is not entitled to the … 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

Federal Circuit Confirms Constitutionality of IPR Proceedings

CAFC
Today, in MCM Portfolio LLC v. Hewlett-Packard Co., a panel of the Federal Circuit unanimously upheld the constitutionality of IPR proceedings, finding that delegation of patent invalidity determinations to a non-Article III Court (in this case, the PTAB) is permissible and that Article 7 of the Constitution is not violated when a patentee cannot bring … Continue reading this entry

Will New PTAB Rules Impact IPRs Filed By Kyle Bass Hedge Fund?

On August 19th, the USPTO released a new set of proposed rules related to post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Among the many offered rules was the addition of a “Rule 11-type certification” for all papers filed with the PTAB. Such a provision would provide for sanctions for noncompliant practitioners and parties … Continue reading this entry

Does Spike In IPR Settlements Signify Petitioner Success?

The most recent IPR statistics have shown a sharp increase in the number of settlements, both before and after institution decisions, as revealed in the following chart. What is most remarkable is the huge spike in settlements prior to institution.  In fiscal year 2015, the number of pre-institution settlements (217) has more than doubled from the prior … Continue reading this entry