Patent litigation often involves the intersection of practice before the PTAB and district courts. Not surprisingly then, the subject of this post—the Federal Circuit’s recent opinion concerning the reexamination of U.S. Patent No. 6,284,471 (“the ʼ471 patent”)—directly relates to a litigation analyzed on our firm’s companion blog, BiosimilarsIP.com. See here and here.
In re…
Seven new IPRs were filed against patents held by Alacritech Inc. on December 27, 2017. These IPRs (four of which were filed by Dell and three by Cavium) join eight others filed by Intel, Dell, or jointly by Wistron, Wiwynn, and SMS InfoComm since November. Earlier in the year, 24 IPRs were filed against Alacritech-held…
In Wi-Fi One, the Federal Circuit held en banc that time-bar determinations by the PTAB under § 315(b) are appealable and remanded the associated IPRs for further proceedings pertaining to the time-bar issue.
Appeals from IPR decisions of the PTAB are limited in scope by § 314(d), which states that “the determination by the…
The topic of sovereign immunity was raised a number of times in inter partes review (IPR) proceedings in 2017, and it was cast into the national spotlight when Allergan transferred several patents for its dry-eye drug Restasis® to the St. Regis Mohawk Tribe in an attempt to shield them from PTAB review. But a recent…
As set forth in the statute and upheld by the Supreme Court in Cuozzo,[1] the Patent Trial and Appeal Board’s (“PTAB” or “Board”) institution decisions are “final and nonappealable.”[2] Accordingly, a petitioner who fails to get a review instituted by the Board has limited options to maintain its validity challenge. One recourse…
The Supreme Court recently held oral argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. Before what appears to be a divided Court, the parties addressed pointed questioning over whether the inter partes review (“IPR”) process is constitutional. The justices’ questions and comments touched on a wide-range of issues including patentee…
On November 21, 2017, the PTAB issued guidance on motions to amend in view of the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).[i] The decision, a compilation of five separate opinions totaling 148 pages, left much to be analyzed and digested. However, as…
On October 5, 2017, the Patent Trial and Appeal Board (“Board”) issued a final written decision in an inter partes review proceeding filed by Neptune Generics, LLC (“Neptune”) challenging the patentability of the claims in Eli Lilly & Co.’s Patent No. 7,772,209 (“the ’209 patent”). The Board held that Neptune failed to establish that claims…
On November 27, 2017, in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the Supreme Court will hold oral argument to determine the constitutionality of the inter partes review (“IPR”) process implemented by the America Invents Act. Clearly, this case has the potential to drastically alter the patent litigation landscape if IPR…
A petitioner in an inter partes review may request to cancel as unpatentable one or more claims only on a ground that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications. This is expressly set forth in the statute, 35 U.S.C. § …
