On April 16, 2019, the Patent Trial and Appeal Board (“the PTAB” or “the Board”) designated three orders as precedential related to the issue of the incomplete disclosure of “real parties-in-interest” (“RPIs”) at the time of the filing of petitions for post-grant proceedings. These three relatively recent orders—all issued since January 2019—present a range of
PTAB Decisions
Key Takeaways from a Flurry of Precedential Decision Designations
Between March 7 and April 5, 2019, the Patent Trial and Appeal Board (“the PTAB” or “the Board”) designated a series of decisions as either “precedential” or “informative.” As part of its revised standard operating procedures (SOP2), the PTAB may designate an otherwise routine decision as precedential—a binding authority in subsequent matters involving similar facts…
Overly Broad Challenges May Lead PTAB to Deny Institution
On January 24, 2019, the PTAB denied institution of inter partes review (“IPR”) in Deeper, UAB v. Vexilar, Inc., Case IPR2018-01310 (PTAB Jan. 24, 2019) (Paper 7). The PTAB exercised its discretion to deny institution despite finding that Deeper demonstrated a reasonable likelihood of success in prevailing as to two of the twenty-three claims…
Two Asserted Lantus Patents Cancelled—Commercial Success Evidence Insufficient Because of Blocking Patents
On December 12, 2018, the U.S. Patent and Trademark Appeal Board (PTAB) ruled in favor of Mylan in its inter partes review (IPR) proceedings. It found all claims of Sanofi’s Lantus formulation patents (U.S. Patent Nos. 7,476,652 and 7,713,930) unpatentable as obvious on numerous grounds, and held that despite over $2 billion in annual sales,…
The PTAB Rejects a “Benefits-Plus-Relationship” Standard For Determining Real Parties-in-Interest
The PTAB, on November 27, 2018, released the public version of Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883, Paper 29 (P.T.A.B. Oct. 11, 2018), finding membership in petitioner’s company plus only an interest in the outcome of the IPR fails to satisfy the AIT analysis for a real party-in-interest (“RPI”).
Realtime…
Another Lesson in Timing for Disclaimers in CBM Reviews
The Patent Trial and Appeal Board (“the Board”) recently held that Customedia Technologies, LLC (“Customedia”) could not moot the CBM proceeding with a post-institution disclaimer of the claims found to recite a financial activity element. Dish Network Corp. v. Customedia Techs., LLC, CBM2017-00023, Paper 48 at 23 (P.T.A.B. June 11, 2018).
A patent is…
Ignore PTAB Precedent At Your Peril
Ignore PTAB Precedent At Your Peril
Given the popularity of AIA post-grant proceedings, many patent litigators have been newly drawn into proceedings before the Patent Trial and Appeal Board (“PTAB”). However, parties and attorneys involved in such proceedings should be aware that the PTAB has its own set of precedential decisions, and the PTAB is…
When Does a Reference Disclose a Recited Range with Sufficient Specificity to Constitute an Anticipation of the Claim?
In Titanium Metals Corp. v. Banner[1], the Federal Circuit notably held that it is “an elementary principle of patent law” that when a claim recites a numerical range, the claimed range is anticipated by a prior art reference that discloses a point or an example within that range. Accordingly, when seeking to anticipate…
PTAB Finds that Tribal Sovereign Immunity Does Not Apply to Review Proceedings
The Patent Trial and Appeal Board (“the PTAB”) ruled last Friday, February 23, 2018, that tribal sovereign immunity does not apply to the Saint Regis Mohawk Tribe. The issue has been percolating for months. For more background on the issue, see these previous blog articles – Tribal Sovereign Immunity: The New Defense Against IPRs? and…
Recent Decision Casts Doubt on the Fate of Tribal Sovereign Immunity at the PTAB
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…