Tag Archives: ptab

PTAB Institutes Trial On Previously Challenged Cabilly Patent

The Cabilly ’415 patent is well known in the bio/pharma space as relating to the artificial synthesis of antibody molecules. The Cabilly ‘415 patent’s notoriety was aided by a previous interference, a merged ex parte reexamination proceeding, and several Federal District Court Litigations. Nevertheless, Petitioners Sanofi-Aventis and Regeneron Pharmaceuticals petitioned for inter partes review (IPR2015-01624), … Continue reading this entry

High Stakes Race Between Apple and VirnetX: Will PTAB Trump The Texas Jury's Award of $625M?

A Texas jury today raised the stakes even higher in a race involving parallel proceedings between the PTAB and Texas district court when it found that Apple infringed the VirnetX patents and awarded to VirnetX $625M in damages. While the Texas jury found the patents to be valid and infringed in today’s verdict, the PTAB … 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

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

Federal Circuit Backs PTAB Decision Curtailing A Party's Use Of "Supplemental" Information

In Redline Detection v. Star Envirotech, the Federal Circuit confirmed that the PTAB can decline to consider timely filed “supplemental” information from a petitioner (after filing its petition) pursuant to 37 C.F.R. § 42.123(a). While some PTAB decisions have permitted very limited use of Rule 123(a) by petitioners to supplement their petition after an institution … Continue reading this entry

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

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

Federal Circuit Confirms Constitutionality of IPR Proceedings

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

Estoppel Versus Discretion: How is the PTAB Deciding Multiple Petitions Against the Same Patent?

The PTAB has denied petitions filed by the same petitioner against the same claims, even where the subsequent petition relied upon completely different prior art (IPR2014-00506), reasoning that a petitioner should not hold back its best references for a subsequent attempt.  But what happens when the same petitioner files a new petition (after a first petition is denied) against … Continue reading this entry

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

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