It is well established that objective evidence of nonobviousness (e.g., commercial success, long-felt but unresolved needs, unexpected results, etc.) must be taken into account when evaluating the obviousness of a claimed invention. This standard applies during patent prosecution, in proceedings before the PTAB, and in litigation. However, as demonstrated by a recent IPR decision involving Kyle Bass’s Coalition for Affordable Drugs (IPR2015-01776), it can be can be challenging to provide sufficient evidence of unexpected results and long-felt need.
You can’t prepare for something that you can’t see. Newly recognized properties of previous discoveries or other inherent features not appreciated at the time of filing can sneak up on you after patent prosecution has ended, as was the case in the recent decision in Pharmacosmos A/S, v. Luitpold Pharmaceuticals, Inc. (IPR2015-01490).
The Federal Circuit recently confirmed that challengers using IPR outside the typical context of ongoing litigation face a trap for the unwary: those that are not careful to lay the proper groundwork may not be able to appeal an adverse decision by the Board.
The immune system is said to be a double-edged sword: On one hand, it protects us from foreign invaders such as bacteria and viruses. On the other, it can recognize its host as the enemy, causing autoimmune disorders like rheumatoid arthritis. A similar double-edged sword principle holds true for prior art references. In a recent decision in Momenta Pharmaceuticals, Inc. v. Bristol-Myers Squibb Company (IPR2015-01537), prior art cited by Momenta in a § 103 challenge to Bristol-Myers Squibb’s CTLA4Ig formulation patent turned out to be the very instrument that killed its case.
As 2016 fades into the rearview, we look back at our most-read blog posts of last year. The topics you were most interested in included a retrospective of the AIA’s first five years, guidance amidst the uncertainty preceding the Supreme Court’s Cuozzo decision (since squared away), and exploration of post-grant strategies for biotech patents. What would you like to see us write about in 2017? Let us know.
The standard governing which patents can be attacked in covered business method (CBM) patent review proceedings has received renewed attention recently. The Federal Circuit’s decision last month in Unwired Planet v. Google was a stern reminder to petitioners (and to the Patent Office) that not all patents that seem to be directed to “business methods” can be challenged in CBM proceedings.
In Coalition for Affordable Drugs v. Pozen, Inc. (IPR2015-01718), the Board instituted a trial despite a failure of the petition to show that a final “wherein” clause of a method claim was met by the prior art. Rather, the Board reasoned that the “wherein” clause was likely to actually be a “whereby” clause, just by another name. Because a “whereby” clause stating the intended result of performing a method is not a limitation on the claim, failure to show that the result was known or even occurred in the prior art was not a basis to deny institution.
Covered business method (CBM) review is a popular alternative to IPR, but is available only for patents related to financial activities. In Unwired Planet, LLC v. Google Inc., No. 2015-1812 (Fed. Cir. Nov. 21, 2016), the Federal Circuit held that the Board has been too generous in its definition of which patents can be subject to CBM review—allowing some only because they could be used in a way that relates to financial activities.
To be or not to be is an important question in classic literature as well as in defending patents that may be challenged with a Covered Business Method (CBM) review. One patent owner faced this question—not for itself, but for a dependent claim—when its patent was challenged in Plaid Technologies Inc. v. Yodlee, Inc. (CBM2016-00070, paper 8).
Post-grant review (PGR) is potentially more powerful than IPR, as it allows challenges to any requirement of patentability, while IPR is limited to claim validity in view of patents and printed publications. Accordingly, PGR, if available, may in some cases be a better option for petitioners. In one recent case, PGR might have been the better option—had the petitioner persuaded the PTAB that the patent at issue qualified for PGR.