Petitioner Beware: Inconsistent Claim Construction Positions Can Doom a Petition

Posted by Nathan Speed on Feb 20, 2019

Nathan Speed

While the Board recognizes that its rules do not require petitioners to take “positions consistent with related cases in different fora,” a recent IPR decision illustrates the risks a petitioner faces when it advances claim construction positions before the Board that are inconsistent with its positions in related district court proceedings.

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Topics: IPR, PTAB

Be Careful What You Wish For Post-SAS

Posted by Anant Saraswat on Feb 12, 2019

Anant Saraswat

In the wake of SAS Institute v. Iancu, the PTAB has sometimes expanded pending IPRs to include previously un-instituted grounds. But can the PTAB rely on SAS to retroactively deny institution? A recent decision says yes, in at least some circumstances. And while the facts of this case are unusual, it nevertheless demonstrates that petitioners should be cautious when relying on SAS to try to induce the PTAB to reconsider grounds that it didn’t originally find persuasive.

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Topics: PTAB, Post-Sas

All or Nothing: PTAB Must Institute IPR on All Challenged Claims and Grounds, or None at All

Posted by Kevin Mosier on Jan 29, 2019

Kevin Mosier

This past year, the Supreme Court in SAS Institute v. Iancu held that once the PTAB institutes an IPR trial its subsequent final written decision must address all claims challenged in the petition. The Court explained that its holding was compelled by a plain reading of 35 U.S.C. § 318(a), which states that the PTAB must issue a final written decision on “any patent claim challenged by the petitioner.” SAS Institute did not decide, however, whether the PTAB’s final written decisions must also address all grounds raised in a petition. The Federal Circuit has subsequently provided a clearer answer.

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Topics: Patent Owners, IPR, PTAB

Motions to Amend: The Board Invites Alice to the IPR Party

Posted by Nathan Speed on Jan 25, 2019

Nathan Speed

One strategy that a patent owner can pursue in an IPR trial is to file a motion to amend seeking to replace one or more of the challenged claims with substitute claims that neither enlarge the scope of the claims nor introduce new subject matter. When a patent owner files such a motion, the petitioner is permitted to oppose the motion and argue why the substitute claims are not patentable. In a recent decision, the Board reaffirmed that the grounds available for a petitioner to attack the patentability of substitute claims are not limited to anticipation or obviousness, but rather can include other sections under the Patent Statute, including § 101.

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Topics: Petitioners, IPR, patent

Non-Prior Art Evidence of the Prior Art? The Federal Circuit Says It May be Okay

Posted by Stuart Duncan Smith on Oct 29, 2018

Stuart Duncan Smith

Section 311(b) of the American Invents Act (“AIA”) provides that a petitioner may request cancellation of one or more claims of a patent “only on a ground that could be raised under section 102 and 103 and only on the basis of prior art consisting of patents or printed publications.” In light of this clear restriction on the evidence that can lead to the cancellation of a claim, one might reasonably assume that all of the petitioner’s evidence during that trial must be prior art. A recent decision from the Federal Circuit, however, shows that this assumption is not entirely correct. Rather, in some situations, the cancellation of a claim may turn on evidence that is not even prior art to the claim.

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Topics: Patent Owners

Who Bears the Burden in IPR? It Depends on the Argument

Posted by Stuart Duncan Smith on Oct 23, 2018

Stuart Duncan Smith

A hallmark of IPR proceedings is that the petitioner—not the patent owner—has the burden to prove that the challenged claims are unpatentable. This hallmark is statutory as section 316(e) of the American Invents Act (which created IPRs) provides that “the petitioner shall have the burden of proving a proposition of unpatentability.” And yet, a recent decision from the Federal Circuit confirms IPR nonetheless applies the traditional rule that can shift a burden to the patent owner to rebut the petitioner’s prima facie case of obviousness. Patent owners thus cannot blindly rely upon section 316(e) and, in certain circumstances, should consider submitting evidence to defend the claims.

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Topics: Petitioners, Patent Owners

Who Will Be Left Standing?  The Constitutional Requirements for IPR Appeals

Posted by Andrew Williams on Oct 5, 2018

Andrew Williams

As we have previously discussed, some petitioners for IPR are not able to appeal an adverse decision by the PTAB because they lack constitutional standing. Though Article III standing is not required to file an IPR petition, because it does not apply to administrative proceedings, standing is required to bring a case in Federal court—including an appeal to the Federal Circuit. Several recent decisions have further clarified this standing requirement and give good reason to continue to follow the issue.

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Topics: Patent Owners

BRI vs. Phillips Standard: “Treating” Definitions with Care

Posted by John Nguyen on Jul 30, 2018

John Nguyen

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.

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Topics: Patent Owners, BioPharma

Don’t Forget the Specification When Applying BRI

Posted by Anant Saraswat on Jul 20, 2018

Anant Saraswat

A recent Federal Circuit decision illustrates the dangers of construing claims too broadly when applying the “broadest reasonable interpretation” (BRI) standard. Petitioners especially must remember that the BRI of a term must be “reasonable” in light of the specification. Relying on broad constructions that fail to account for narrowing language in the specification can lead to defeat.

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A Printed Publication May Be More Than Just a Label

Posted by Phylis Hétié on Jul 17, 2018

Phylis Hétié

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.

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Topics: Printed Publications

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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.