Tom Chlebeck

Tom Chlebeck assists the Electrical & Computer Technologies Group in patent prosecution, litigation, and client counseling relating to computer, electrical, and mechanical technologies.

Recent Posts

In IPR Petitions, Paste Makes Waste

Posted by Tom Chlebeck on Feb 26, 2018

Tom Chlebeck

The PTAB recently signaled a warning to petitioners about the dangers of third party submissions made during patent prosecution—even during prosecution of a separate but related patent. For patent holders, this warning serves as an opportunity to protect their patents in similar situations. In PGR2017-00038, Live Nation Entertainment, Inc. filed a petition to institute post-grant review of U.S. Patent No. 9,466,035. Live Nation’s arguments were that the claims were patent ineligible under 35 U.S.C. 101 and would have been obvious under 35 U.S.C. 103.

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Topics: Patent Owners, Petitioners

PTAB: Individuals and Persons are Humans, Too

Posted by Tom Chlebeck on May 31, 2016

Tom Chlebeck

Last month, the Board weighed in on what it means to be human in a rare decision granting a motion to amend claims in an IPR (IPR2015-00208). The owner of U.S. Patent No. 6,681,897 (which covers a method of handling a wheel of an elevated vehicle to avoid injury) proposed claims in its motion to amend that narrowed the original claims in a number of ways. One addition was to explicitly use the term “human” in referring to who performs the steps of the claims, an addition that may not have been intended to invite deep philosophical discourse. Rather, the patent owner apparently intended to distinguish from the art by excluding methods in which the weight of the wheel is partially supported by a non-human entity, like a hoist, during a carrying step.

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Bass Gets a Bite

Posted by Tom Chlebeck on Oct 15, 2015

Tom Chlebeck

Last week, in a decision that has surprised and worried some, the Board instituted one of the numerous IPRs for which Kyle Bass and the Coalition for Affordable Drugs (IPR2015-00988) filed petitions. Previously, the Board had been able to deny some of Bass’s petitions based on the petitions’ failure to demonstrate that references qualified as prior art (which we discussed here). However, the Board later declined to sanction Bass for abuse of process and misuse of proceedings in filing other similar petitions (which we discussed here).

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Topics: Kyle Bass

Kyle Bass Doubles Down: New IPR Petitions Filed

Posted by Tom Chlebeck on Aug 21, 2015

Tom Chlebeck

Yesterday, Kyle Bass and his hedge funds opened a new front in their war against patent owners (on which we have reported previously) by filing three new IPR petitions. This time, the Bass Coalition has attacked U.S. Patent Nos. 7,582,621 (IPR2015-01776) and 7,767,657 (IPR2015-01780 and IPR2015-01785). Assigned to Anacor Pharmaceuticals, Inc., these patents cover KERYDIN® (tavaborole), which is an antifungal medication approved by the FDA for treatment of onychomycosis of the toenails due to Trichophyton rubrum or Trichophyton mentagrophytes.

On the same day in related IPR proceedings, Celgene responded to the Coalition’s defense of this unusual market manipulation strategy (see, for example, IPR2015-01103 Paper 19).

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Topics: Kyle Bass

Patent Owner Goes Fishing for Sanctions in Bass IPR Saga

Posted by Tom Chlebeck on Aug 6, 2015

Tom Chlebeck

Last week, the latest chapter in the Kyle Bass IPR saga unfolded, as one of the besieged patent owners filed a motion for sanctions against the petitioner and the hedge funds funding the petitions. The patent owner, Celgene, alleged that filing IPR petitions was part of an extortion attempt, amounting to an abuse of process and improper use of IPR proceedings. It proposed that the PTAB sanction the hedge funds by dismissing the petitions filed against Celgene patents.

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Topics: Kyle Bass

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.