Category Archives: Patent Trials

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PTAB Denies Institution Of Kyle Bass's Ampyra Patent Challenge

The USPTO Patent Trial and Appeal Board (PTAB) has put an end to Kyle Bass’s Ampyra patent challenge, by denying institution of Inter Partes Review (IPR) proceedings. While many were hoping the PTAB would render a decision based on the “improper purpose” of the challenge, the PTAB decisions are based on one of the more … Continue reading this entry

Sanofi Seeks IPR Of Cabilly Patent

On July 27, 2015, Sanofi-aventis U.S. LLC and Regeneron Pharmaceuticals, Inc. filed a petition for Inter Partes Review (IPR) of the “Cabilly II” patent, U.S. Patent No. 6,331,415. The Cabilly II patent granted shortly after I started my career as an attorney, and has stayed in the news almost ever since. Will this IPR make its final headlines?… Continue reading this entry

New Insights On USPTO Patent Trial And Appeal Board Proceedings

I’m pleased to announce that Foley & Lardner LLP has launched a new blog that will focus on USPTO Patent Trial and Appeal Board (PTAB) proceedings, and provide experienced-based insights into Patent Trial proceedings. I’ll still be spending most of my blogging time here, but once in a while I’ll be writing about PTAB issues … Continue reading this entry

Federal Circuit Reverses Unreasonable PTAB Claim Construction, Upholds Idle Free Standard For Motions To Amend

The Federal Circuit decision in Microsoft Corp. v. Proxyconn, Inc., addressed several important issues relating to post-grant patent trials conducted by the USPTO Patent Trial and Appeal Board (PTAB), including the PTAB’s claim construction standard and the requirements for motions to amend the claims. The net result of the decision was to affirm-in-part, reverse-in-part, vacate-in-part and remand–which … Continue reading this entry

Another Sequenom Patent Appeal Heads To The Federal Circuit

While Sequenom’s appeal of the district court’s summary judgment of invalidity of U.S. Patent 6,258,540 under 35 USC § 101 has been pending at the Federal Circuit, the USPTO has been considering the validity of the patent under 35 USC §§ 102 and 103 in an Inter Partes Review proceeding. Now that the decision of the Patent … Continue reading this entry

Keeping Up With Kyle Bass

In the few weeks since I first wrote about Kyle Bass and the Coalition for Affordable Drugs he formed to challenge Orange Book-listed patents that he believes “have little value other than to drive up prescription drug prices,” he has been busy. Here, I review the patents he has challenged with Inter Partes Review (IPR) petitions, and identify … Continue reading this entry

Stricter Standing For Inter Partes Review?

Neither the statutes nor the regulations governing Inter Partes Review (IPR) require the party challenging the patent to have been charged with infringement, or even to establish any interest in practicing the claimed subject matter. While the costs of IPR proceedings may prevent casual challenges, now that hedge fund manager Kyle Bass has filed several IPR … Continue reading this entry

Federal Circuit Affirms Use Of Broadest Reasonable Interpretation Of Claims In IPR Proceedings

In affirming the decision of the USPTO’s Patent Trial and Appeal Board (PTAB) in In re Cuozzo Speed Technologies, LLC, the Federal Circuit upheld the PTAB’s use of the “broadest reasonable interpretation” of the claims in Inter Partes Review (IPR) proceedings. The court also determined that it did not have jurisdiction to review the PTAB’s decision … Continue reading this entry

Federal Circuit Applies "Searching Review" Of Stay Pending CBM Proceeding

In Benefit Funding Systems, LLC v. Advance America Cash Advance Centers, Inc., the Federal Circuit upheld the district court’s decision to stay patent infringement litigation while the USPTO Patent Trial and Appeal Board (PTAB) conducts a Covered Business Method (CBM) review of the patent at issue. Although the Federal Circuit ultimately affirmed, it noted that the America … Continue reading this entry

Inter Partes Review -- Parties Favor Settlement Over Board Decisions

Now that we have a growing body of statistics on the Inter Partes Review proceedings created by the America Invents Act, it is interesting to see how the proceedings are being resolved. With the significant attention given to Patent Trial and Appeal Board (PTAB) decisions, it may come as a surprise to learn that a … Continue reading this entry

First Post Grant Review Petition Shows That Amending Claims Is Not Child's Play

The first Post Grant Review petition visible to the public was filed August 5, 2014, against U.S. Patent 8,684,420. The patent was granted from an application filed July 26, 2013, but claims priority through a series of continuation applications to an application filed September 8, 2011, and to a provisional application filed November 5, 2010. … Continue reading this entry

Federal Circuit Says Commission Must Toe The Line In Invisalign ITC Case

In Align Technology, Inc. v. International Trade Commission, the Federal Circuit held that ITC action that violated ITC’s own regulations warranted vacatur under the Administrative Procedures Act. While the case addresses specific ITC regulations, the same principles apply to other agencies, including the USPTO. Thus, the USPTO should take note of this decision, and take care … Continue reading this entry

Court Won't Review USPTO Denial Of Inter Partes Review

In a decision issued on April 18, 2014, Judge Payne of the U.S. District Court for the Eastern District of Virginia granted the USPTO’s motion to dismiss the case brought by Dominion Dealer Solutions, LLC to challenge the USPTO’s decisions denying petitions to institute inter partes review of five patents granted to Autoalert, Inc. As I predicted in this … Continue reading this entry

Federal Circuit Issues Remand In Ten Year Reexamination Proceeding

In Tempo Lighting, Inc. v. Tivoli, LLC, the Federal Circuit vacated the decision of the U.S. Patent Office Patent Trial and Appeal Board that had reversed the Examiner’s rejection of most of the claims of the patent at issue. While the decision touches on a few important legal issues, this ten year reexamination proceeding illustrates … Continue reading this entry

Dominion Dealer Solutions Seeks Review Of USPTO Decisions Denying Inter Partes Review

On October 15, 2013, Dominion Dealer Solutions, LLC filed a complaint in the U.S. District Court for the Eastern District of Virginia seeking review of the USPTO’s decisions denying petitions to institute inter partes review of five patents granted to Autoalert, Inc. Dominion faces an uphill battle in view of the discretion granted to the … Continue reading this entry

District Court Refuses To Review USPTO Decision To Institute Post Grant Review Of Versata Covered Business Method Patent

In Versata Development Corp. v. Rea, the U.S. District Court for the Eastern District of Virginia dismissed Versata’s challenge of the PTAB’s decision to institute post grant review of its patent for lack of jurisdiction. The court based its decision on alternative grounds, finding that the America Invents Act (AIA) “precludes judicial review of the … Continue reading this entry

Fresenius Escapes $25 Million Damages Award, Based on Invalidation of Baxter Patent In Ex Parte Reexamination

In Fresenius, USA Inc. v. Baxter International, Inc., the Federal Circuit interpreted the ex parte reexamination statutes (35 USC §§ 301-307) as providing that the final cancellation of claims in a reexamination proceeding is binding on concurrent litigation proceedings, as long as the litigation is still pending. This decision validates the use of ex parte … Continue reading this entry

A Quick Look At The First Patent Trial And Appeal Board Decision In a Covered Business Method Patent Proceeding, SAP America, Inc. v. Versata Development Group, Inc.

On June 11, 2013, the USPTO Patent Trial and Appeal Board (PTAB) issued its first final decision in a covered business method patent (CBM) proceeding, in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001). Although this case is not in the field of pharmaceuticals or biotechnology, a few aspects of this decision will be … Continue reading this entry

USPTO Rules Eliminate Inter Partes Review Dead Zone

On March 25, 2013, the USPTO published final rule changes to “Implement the Technical Corrections to the Leahy-Smith America Invents Act as to Inter Partes Review.” The rule changes have an effective date of March 25, 2013, and relate to statutory changes with an effective date of January 14, 2013. The Dead Zone The AIA … Continue reading this entry

USPTO Board Holds That Complaint Dismissed Without Prejudice Does Not Bar Inter Partes Review

In a decision granting (in part) a Request for Inter Partes Review, the USPTO Patent Trial and Appeal Board (PTAB) held that an infringement complaint that was dismissed without prejudice did not bar the Request for Inter Partes Review. The Statute At Issue The Inter Partes Review statute includes a limitations period measured from service … Continue reading this entry

Who Can Appear In Patent Trials Before The USPTO Patent Trial And Appeal Board?

Now that new patent trials are being conducted at the USPTO Patent Trial and Appeal Board (PTAB), questions are arising as to who can best represent the parties in such proceedings. Should  it be patent attorneys, who have  experience with Patent Office practice, or should it be litigators, who may have more experience taking depositions of … Continue reading this entry