Tag Archives: parallel litigation

Reduced Scope of Post-IPR Estoppel Imperils Litigation Stays

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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

IPR PROACTIVE DEFENSE MEASURES – STRATEGIES AND CONSIDERATIONS FOR PATENT OWNERS

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Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one. This article explores IPR proactive defense measures that may be useful for patent owners to deploy … Continue reading this entry

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

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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

USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings

Today the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented an earlier set of “quick fix” rules changes on May 19th. The prior and newly proposed rule changes may impact proposed legislative changes being debated … Continue reading this entry

Lessons Learned From the 1st Successful Pharmaceutical IPR Defense of Orange Book Listed Patents

In three petitions filed on the same day in 2013, styled Amneal v. Supernus, Amneal filed what appears to be the first challenge of Orange Book listed pharmaceutical patents that led to institution followed by a final decision in which the patent owner prevailed.[1]  Several lessons are apparent from a review of the first successful defense … Continue reading this entry

An Invalidity Argument Without a Home? The PTAB's Discretion to Ignore Grounds for Invalidity

By Shaun R. Snader[1] & George C. Beck The post-grant proceedings established by the America Invents Act – inter partes review (IPR), covered business method (CBM) review, and post-grant review (PGR) –promise faster, less expensive results as compared to district court litigation, and an adjudicative body with expertise in patent law. A significant tradeoff to these … Continue reading this entry

Bio/Pharma IPR Challenges Nearly Double in 2015

Newly released statistics (2015-06-30 PTAB Statistics) from the USPTO reveal that the number of bio/pharma IPR challenges almost doubled in 2015, even though fiscal year 2015 still has three months to go. Last year, there were only 66 bio/pharma IPR petitions filed. This fiscal year, so far 113 bio/pharma IPR petitions have been filed as of June 30th.… Continue reading this entry