USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings
Today the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the...
View ArticleWhat Is the Latest on Amendments in PTAB Proceedings?
Among other topics, a recent web conference hosted by George Quillin and Jeff Costakos tackled the latest developments in amendment practice before the PTAB. The conference addressed the very recent...
View ArticleKyle Bass Loses Round 1 of IPR Attack Against Pharma/Biotech Patents
On August 24, 2015, the Patent Trial and Appeal Board (PTAB) declined institution of two petitions filed by Coalition For Affordable Drugs for Inter Partes Reviews (IPRs) of Acorda’s patents (U.S....
View ArticlePTAB Requests Additional Briefing on Hedge Fund IPR Questions: A Decision May...
On Sept. 1, 2015, the PTAB issued an order in Coalition for Affordable Drugs (CFAD) v. NPS Pharmaceuticals for the parties to brief the following questions in 7 business days......By: Stephen B. Maebius
View ArticleEstoppel Versus Discretion: How is the PTAB Deciding Multiple Petitions...
The PTAB has denied petitions filed by the same petitioner against the same claims, even where the subsequent petition relied upon completely different prior art (IPR2014-00506), reasoning that a...
View ArticleSeveral hedge fund-linked IPR Petitions Instituted: PTAB Finds No Abuse of...
Following a string of denials, the PTAB has recently instituted IPR against several pharmaceutical patents where the petitions were filed by entities linked to hedge funds. Prior to these recent...
View ArticleProposed Rule Changes For IPR Appeals
On December 3, 2015, the Federal Circuit issued a notice of proposed changes to its Rules of Practice, many of which relate to IPR practice under the AIA... Some of the proposed changes impact the...
View ArticleFederal Circuit Affirms PTAB's IPR Decision Invalidating A Pharmaceutical Patent
On December 17, 2015, in Merck v. Gnosis, the Federal Circuit affirmed the PTAB’s IPR Decision finding a pharmaceutical patent invalid for obviousness. Justice Newman vigorously dissented from the...
View ArticleUse of Priority Denial to Subject Apparent "Pre-AIA" Patents to PGR: Inguran...
A recent decision by the PTAB, Inguran v. Premium Genetics, demonstrates that a Petitioner may subject an apparent “pre-AIA” patent, having at least one priority date before and at least one priority...
View ArticleFederal Circuit Confirms Constitutionality of IPR Proceedings
On December 3, 2015, in MCM Portfolio LLC v. Hewlett-Packard Co., a panel of the Federal Circuit unanimously upheld the constitutionality of IPR proceedings, finding that delegation of patent...
View ArticleFederal Circuit Backs PTAB Decision Curtailing A Party's Use Of...
In Redline Detection v. Star Envirotech, the Federal Circuit confirmed that the PTAB can decline to consider timely filed “supplemental” information from a petitioner (after filing its petition)...
View ArticleSupreme Court Accepts 1st IPR Appeal: Cuozzo Could Mark Turning Point for...
On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed v. Lee, which represents the first time the high Court will address an AIA proceeding, in this case an IPR decision. Based on...
View ArticleHigh Stakes Race Between Apple and VirnetX: Will PTAB Trump The Texas Jury's...
A Texas jury today raised the stakes even higher in a race involving parallel proceedings between the PTAB and Texas district court when it found that Apple infringed the VirnetX patents and awarded to...
View ArticleCAFC Partially Relaxes IdleFree Requirements for Amendments During IPR
On February 11, 2016, in Nike v. Adidas (Fed. Cir. 2016), the Federal Circuit partially relaxed the hurdle for a patent owner to amend claims during an IPR or other AIA proceeding. This follows the...
View ArticleVirnetX Faces Follow-on IPR Petition from a Different Petitioner After...
In IPR2014-00614, Microsoft filed a petition for IPR against US Patent No. 7,418,504 (“the ‘504 patent) owned by VirnetX, which was instituted based upon anticipation grounds over Kiuchi (see...
View ArticleThe Latest Twist In The Apple v. VirnetX IPRs: Appeals Court Issues Temporary...
On March 7, 2016, the Federal Circuit issued a temporary stay to permit briefing by the parties on the question of whether the PTAB properly ruled that Apple could use the joinder process in Mangrove...
View ArticlePTAB Institutes Kyle Bass IPR Against Pharmaceutical Patent Based On SEC...
Kyle Bass has filed numerous prior IPR petitions against pharmaceutical patents, some of which have been denied due to use of prior art references that were not sufficiently proven to be “publicly...
View ArticlePatent Due Diligence: All That Glitters May Not Be PTAB Gold
An obvious but sometimes overlooked item when conducting patent due diligence is to check for PTAB proceedings (CBM, IPR, or PGR). Although the Patent Application Information Retrieval System (PAIR)...
View ArticleUSPTO Releases New Rules For AIA Post-Grant Proceedings
On March 31, 2016, the USPTO released its long-awaited package of rules for AIA post-grant proceedings. The final rules largely track the proposed rules (see “USPTO Proposes Extensive Changes to AIA...
View ArticleThe New AIA Rules May Help Patent Owners Avoid Trial
On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply “to all AIA petitions filed on or after the effective date and to...
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