Judicial estoppel is an equitable doctrine that precludes a party from taking a position in one proceeding that is inconsistent with a position the party took in a previous proceeding. It can be used as a defensive strategy in an inter partes review, for example, when the patent owner identifies that the petitioner is advancing an argument in its petition that is inconsistent with a position the petitioner took in some other proceeding. However, four recent IPRs, exemplified by IPR2018-00291, highlight that meeting the standard for judicial estoppel is no easy task.
Typically, the PTAB and district courts apply different claim construction standards, which can cause the two forums to construe the same term from the same patent differently. Such divergent treatment occurred in a recent PTAB decision, Mylan Pharmaceuticals Inc. v. Janssen Oncology, Inc. (IPR2016-01332). In Mylan, the PTAB’s claim interpretation of the term “treatment” differed from the district court’s interpretation of the same term in co-pending litigation. The Mylan decision illustrates the divide between the two forums’ claim construction standards and the consequences that those different standards can have on an IPR.
As we have written previously, the PTAB is very active in defining what is and is not a printed publication, and what the PTAB decides can make or break the IPR. A recent decision illustrates yet again the pitfalls that petitioners can face when attempting to prove that a reference is a printed publication. In IPR2016-01614, the petitioner cited a drug label as a printed publication, and though it had a copyright date, the PTAB wanted to see more than just what was on the face of the label.
Topics: Printed Publications
A recent PTAB decision highlights the difficulty of persuading the Board to allow live testimony from an expert during post-grant proceedings. In IPR2017-00433, the PTAB denied patent owner Polaris Industries Inc.’s motion for the live testimony of an expert, even as it acknowledged that his credibility was at issue.
What is the scope of IPR estoppel? It depends. Not necessarily on the facts, but sometimes on the court: district courts continue to have divergent views of IPR estoppel.
Topics: IPR Estoppel
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 Patent Office has now posted the final amendments to the Rules of Practice for Trials Before the PTAB, which will be published in the Federal Register on April 1. Below is a summary of the key changes.
Recently, we discussed a decision in which the Board upheld the statutory time bar and denied institution in spite of the petitioner’s arguments that technical difficulties rendered timely filing impossible. In a subsequent decision, the Board reached the opposite conclusion and demonstrated that under certain rare circumstances, a party’s failure to file within the mandated time period is not fatal.
Last week at the Patent Public Advisory Committee’s quarterly meeting, Acting Chief Judge Nathan Kelley discussed a number of topics related to the PTAB, including an update on the forthcoming rule changes for AIA trial proceedings and the recent designation of two decisions as precedential. In addition, a new pilot program was announced that will begin this spring and is designed to establish a bridge between the PTAB and patent examiners examining applications that claim priority to patents involved in an IPR.
When practicing before the Board, every deadline should be viewed as set in stone. The Board’s recent denial of institution in Terremark N. Am. LLC v. Joao Control & Monitoring Sys., LLC, IPR2015-01482, demonstrates that it will uphold the statutory time bar even if the petitioner alleges that the Board’s own technical issues prevented the timely filing of the petition.