Remands and reversals of the Board are relatively rare. Nonetheless, the Federal Circuit has vacated or reversed PTAB decisions every so often for adopting an erroneous claim construction.[1] Most recently, in Owens Corning v. Fast Felt Corp., 2016-2613 (Fed. Cir. Oct. 11, 2017), the Federal Circuit reversed the PTAB’s decision upholding the challenged
Patent
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…
Federal Judge and U.S. Senators Weigh in as PTAB Considers Tribal Sovereign Immunity Defense in IPR Proceeding
Senior U.S. Circuit Judge William Bryson ruled on Monday that all the asserted claims in the six Restasis patents that Allergan PLC (“Allergan”) accused generic-drug manufacturers of infringing were invalid for obviousness.[i] Last month, Allergan transferred the patents for this dry eye drug to the Saint Regis Mohawk Tribe (“Tribe”) in an endeavor to…
Tribal Sovereign Immunity: the New Defense Against IPR’s?
Just recently, Allergan PLC (“Allergan”) announced that it had transferred the patents for its dry-eye drug Restasis to the Saint Regis Mohawk Tribe to take advantage of its sovereign immunity status and ward off challenges to the patents. Under the deal, the Tribe received an upfront payment of $13.75 million and will receive $15 million…
Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. – A Foreshadowing of Future Scrutiny of PTAB Practices?
In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. LTD., 2016-2321 (Fed. Cir. August 22, 2017)(designated precedential), the Federal Circuit upheld the PTAB’s finding that a patent directed to an HVAC system was invalid. However, a concurring opinion criticized the PTAB’s joinder practice and use of expanded panels, indicating that such practices…
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…
Private Right or Public Right – Whether a Patent is One or the Other Can Spell the End for IPRs
On Monday, June 12, 2017, the Supreme Court granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC, No. 16-712, to answer the question whether the PTAB could properly examine the validity of a patent in an inter partes review.
Oil States first filed an infringement suit against Green’s Energy Group…
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…
PTAB Real Party-in-Interest Issues — Guidance From the Supreme Court?
The PTAB has been reluctant to find that an unnamed party is a real party-in-interest in an AIA review or in privity with the named party. Usually a patent owner attempting to establish that a real party-in-interest has not been named has had to establish that the unnamed party exerted control or could have exerted…
The Federal Circuit Orders the PTAB to Construe Expired Patents Under Phillips
In a 16-page non precedential opinion, the Federal Circuit held that the PTAB must construe claims of an expired patent using a Phillips-type claim construction, even if the subject patent had not expired at the time the AIA trial was instituted. Black & Decker v. Positec USA, Inc., Nos. 2015-1646, -1647, slip op. at …