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
PTAB Decisions
PTAB Grants a Rare Rehearing in Cook Medical, LLC v. Boston Scientific Scimed, Inc
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…
Eli Lilly’s Pemetrexed Patent Survives IPR Challenge
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…
IPRs Instituted for Three out of Four Patents at Issue in Abraxis v. Actavis Cancer Drug Dispute
Abraxis Bioscience, developer of cancer drug Abraxane®, filed suit against Actavis in April of 2016 following its receipt of notice that Actavis sought approval of a generic form of the drug from the FDA. The notice, called a Paragraph IV Certification, represented that Actavis believed the patents covering the drug were invalid, unenforceable, or would…
PTAB Issues First PGR Institution Decisions in Months
Post-grant review (PGR) is the least common post-issuance trial proceeding before the Patent Trial and Appeal Board (PTAB). Only 1% of petitions filed for post-issuance trial proceedings since the institution of the America Invents Act have been for PGRs, while 92% and 7% have been for inter partes review (IPR) and covered business method (CBM)…
PTAB Institutes Post-Grant Review of Pharmaceutical Patent
In an effort to combat pharmaceutical patent holders, several companies are now filing petitions for post-grant review on the theory that the claims are unpatentable for lacking sufficient written description and enablement. Although the number of post-grant review proceedings remains fairly small in comparison to inter-partes review proceedings, the recent increase in filings by generic…
When a Patent Owner is not a Patent Owner
Two IPRs (IPR2016-00663 and IPR2016-00669) filed on patents asserted against Microsoft in district court have ended with victory for the tech giant in an unusual procedural turn. Claims of the two patents were cancelled as a result of adverse judgment being entered against the owner of record, Global Technologies, Inc., after the PTAB deemed that…
The PTAB Places Emphasis on Reasonable Expectation of Success
In Coalition for Affordable Drugs VIII, LLC, v. The Trustees of the University of Pennsylvania, No. IPR2015-01835, Paper No. 56 (P.T.A.B. March 6, 2017), the PTAB concluded that despite evidence that the combinations of prior art references may have disclosed the claimed invention, an ordinary artisan would not have had a reasonable expectation of…
PTAB: No Chance to Re-characterize Disclosures of Reference in IPRs
Final Written Decisions were entered on March 7, 2017 in 6 IPRs brought by Qualcomm Inc. against ParkerVision, Inc (IPR2015-01828, -01829, -01831, -01832, -01833, and -01834). These 6 IPRs all challenged patent 6,091,940 (the ’940 patent), a patent directed to methods and systems where a signal with a lower frequency is up-converted to a higher…
PTAB: Sovereign Immunity Applies to IPR’s
In Covidien LP v. University of Florida Research Foundation, Inc., No. IPR2016-01274, Paper No. 21 (P.T.A.B. January 25, 2017), the PTAB held that sovereign immunity prevents would-be petitioners from using IPR’s to challenge the patentability of patents owned by states. Noting that the 11th Amendment confers to the states a broad grant of…