The Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB” or “the Board”) ruling that invalidated three patents in three separate IPR proceedings (IPR2015-00325, IPR2015-00326, and IPR2015-00330). The patent owner, ATI Technologies, asserted that the inventions in the challenged claims antedated the asserted prior art. That is, ATI attempted to swear behind the asserted
IPR
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…
Why the Disconnect? Federal Circuit Reverses Yet Another Inherent Obviousness Decision
On March 8, 2019, in Personal Web Technologies, LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. Mar. 8, 2019) the Federal Circuit reversed the Patent Trial and Appeals Board’s (the “Board” or “the PTAB”) cancellation of U.S. Patent No. 7,802,310 (“the ’310 patent”) based on inherent obviousness in an inter partes review (“IPR”). Another…
First Precedential Opinion Panel Determines PTAB Has Discretion to Join Same Party and New Issues to Existing IPR
Last week, the first Precedential Opinion Panel (“POP”) entered a decision examining the scope of joinder available under 35 U.S.C. § 315(c). Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-00914, Paper 38 (Mar. 13, 2019). The POP made two determinations about the statutory authority of the Patent Trial and Appeal Board (“the…
IPR Petitioner “Lost” Standing to Appeal to Federal Circuit By Abandoning Development of Proposed Biosimilar Before Appeal Was Completed
On February 7, 2019, the Federal Circuit dismissed an appeal because the IPR petitioner, Momenta Pharmaceuticals, essentially “lost” its constitutional standing when – prior to completing its appeal to the Federal Circuit – it abandoned development of its proposed biosimilar after failed Phase 1 clinical trials. Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., No.…
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,…
PTAB Prepares to Convene its First Precedential Opinion Panel to Address Joinder Under 35 U.S.C. § 315(c)
The Patent Trial and Appeal Board (“the PTAB” or “the Board”) is preparing for its first instance of the newly created Precedential Opinion Panel (POP). Proppant Express Invs., LLC v. Oren Techs., LLC, IPR2018-00914, Paper 24 (PTAB Dec. 3, 2018). Interested parties may have had a busy holiday season, because initial briefing was due…
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…
Bye-Bye BRI: PTAB to Apply District Court Claim Construction Standard in AIA Proceedings
On October 11, 2018, the United States Patent and Trademark Office (USPTO) announced a change in the claim construction standard used for inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) review. For these proceedings, the claim construction standard will be changed from the broadest reasonable interpretation (BRI) standard to the standard…