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IPR's & Other Post Grant Proceedings

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In the February 1, 2019 decision of Mylan Pharms. Inc. v. Research Corp. Techs., 2019 U.S. App. LEXIS 3282, __ F.3d __, 2019 WL 405682, the Federal Circuit affirmed a PTAB final written decision (FWD) holding claims of U.S. Reissue Patent 38,551 not unpatentable.  The Federal Circuit also held that time-barred petitioners who participated in an IPR as a result of joinder have standing to appeal.  In finding such standing, the Federal Circuit analyzed the interplay between 35 U.S.C. §§ 315(b), 315(c), and 319.
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On February 7, 2019, the United States Court of Appeals for the Federal Circuit, in Momenta Pharmaceuticals v. Bristol-Myers Squibb, No. 2017-1694, dismissed Momenta’s appeal of a Final Written Decision in an Inter Partes Review (“IPR”) because Momenta had terminated its potentially infringing drug development program. According to the panel, this left Momenta without a sufficiently concrete interest in the action to satisfy the standing requirements of Article III of the United States Constitution.
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Recently, in ZTE (USA) Inc. v. Fundamental Innovation Int’l LLC, IPR2018-00425, Paper No. 34 (Feb. 6, 2019), the Patent Trial and Appeal Board (“PTAB”) allowed Petitioner’s motion to retroactively correct its defective IPR petition to identify a previously undisclosed real party in interest and thereby avoid a mandatory statutory bar.   
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Recently in Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc., IPR2018-01683, Paper No. 11 (PTAB Dec. 18, 2018), the Patent Trial and Appeal Board (“Board”) denied Petitioner’s motion to excuse the late filing of exhibits to the Petition, finding that Petitioner failed to establish good cause for such late filing or that consideration of the late-filed exhibits would be in the interests of justice.
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This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Federal District Courts penned a number of opinions impacting patent law.  Here are some key takeaways from the past year.
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The U.S. Court of Appeals for the Federal Circuit opinion issued on November 1, 2018 clarifies the standard for a document to qualify as a “printed publication” under pre-AIA 35 U.S.C. §102(b) and reversed an earlier Patent Trial and Appeal Board (“PTAB”) decision.1 Specifically, the requirement that a reference be “publicly available” is not as narrow as the PTAB had interpreted. The Court held that “the standard for public accessibility [of an alleged prior art reference] is one of reasonable diligence, to locate the information by interested members of the relevant public.”
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U.S. Patent and Trademark Office Director, Andrei Iancu, recently gave a speech to the American Intellectual Property Law Association where he discussed a new rule proposal aimed at improving the patent amendment process during post-grant proceedings.  Specifically, he informed the audience—and patent practitioners, generally—that the USPTO “will formally publish a notice seeking comments on a new claim amendment process for post grant proceedings.”  The stated purpose of the proposed rule change is to “ensure balance” in post-grant proceedings by making the amendment process “feasible and meaningful” for the owners of challenged patents.  
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In an Initial Determination finding that Fujifilm violated Section 337 by infringing two patents held by Sony, ALJ Cheney found another patent invalid after ruling that inter partes review (“IPR”) estoppel does not apply to the International Trade Commission’s (“ITC”) Office of Unfair Imports Investigations (“OUII”) Staff.  In Magnetic Tape Cartridges and Components Thereof, Investigation 337-TA-1058, ALJ Cheney remarked that even if IPR estoppel prevents a respondent from raising certain references during an investigation before the ITC, IPR estoppel does not prevent Staff from raising those same references to invalidate a patent where Staff was not a party to the IPR.  Id. at 106-07.
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Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”) finding certain claims of U.S. Patent No. 8,714,977 (“the ’977 Patent”), directed to dental implants, unpatentable as anticipated.  The Nobel decision is the latest in a recent line of Federal Circuit cases holding that materials distributed at conferences, trade shows, and meetings are publically available “printed publications” within the meaning of pre-AIA 35 U.S.C. § 102(b).
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Last week the Patent Trial and Appeal Board (“PTAB”) provided yet another arrow in the patent owner’s quiver for defending against institution of IPRs.  In NHK International Corp. v. Intri-Plex Technologies, Inc., IPR2018-00752, the PTAB exercised its discretion under 35 U.S.C. § 325(d) and denied institution because the asserted art was already considered during the original examination of the patent.  The PTAB also found that denial was warranted under 35 U.S.C. § 314(a) in light of the additional factor that a district court trial on the same patent was imminent. 
The U.S. Patent and Trademark Office announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act (“AIA”).
As we noted in our blog post last week, the USPTO held its “Chat with the Chief on SAS” webinar on April 30, 2018, to advise the public on the implications of the Supreme Court’s opinion in SAS Institute for practice before the Board going forward.
When trying to overcome an obviousness rejection of a patent claim, an argument that two or more cited references cannot be combined may be used.  For example, it can be argued that the combination is improper because the modification of a reference completely changes its “fundamental principle of operation.”
In its first en banc decision of 2018, the Federal Circuit held that “judicial review is available for a patent owner to challenge the U.S. Patent and Trademark Office’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. § 315(b) governing the filing of petitions for inter partes review.”
On December 19, 2017, an expanded panel of the Patent Trial and Appeal Board (PTAB) ruled that the state of Minnesota waived its Eleventh Amendment immunity to challenges to patent validity by inter partes review (IPR) by filing suit in federal court alleging infringement of the same patent being challenged by IPR. 
On December 19, 2017 the Patent Trial and Appeal Board (the “Board”) held a “Chat with the Chief” webinar in which Chief Judge David Ruschke presented very recent developments on a variety of topics related to practice before the Board, including Aqua Products guidance for motions to amend, new procedures for handling remands, and the expanded panel process.
On November 21st, the PTAB issued guidance on motions to amend based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
In June, we covered the Supreme Court’s grant of certiorari in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, 137 S. Ct. 2239 (2017). The Court will decide whether inter partes review – an adversarial process used by the Patent and Trademark Office (PTO) since September 16, 2012 to analyze the validity of existing patents – violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
Earlier this week, the United States Patent and Trademark Office (“USPTO”) published a new rule governing when privilege exists for communications between clients and their domestic or foreign patent attorneys and patent agents before the Patent Trial and Appeal Board (“PTAB”).
In a precedential opinion issued on October 11, 2017, the United States Court of Appeals for the Federal Circuit reversed the Patent Trial and Appeals Board’s (“PTAB”) finding of non-obviousness where the prior art taught away from some, but not all, of the embodiments covered by the challenged claims.
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