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

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: Petitioners, Patent Owners

Supreme Court May Let IPRs Continue

Posted by Elizabeth Hudson on Dec 8, 2017

Elizabeth Hudson

Last week, the Supreme Court heard oral arguments in Oil States Energy Services v. Greene’s Energy Group—a case that addresses whether inter partes review unconstitutionally usurps the federal courts’ authority to adjudicate the validity of patents. An examination of the Justices’ questions provides hints of how they are thinking and suggests that IPRs may survive constitutional review.

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Topics: Petitioners, Patent Owners

Supreme Court Suggests a Partial Solution to Partial Institutions

Posted by Elizabeth Hudson on Dec 4, 2017

Elizabeth Hudson

Last week, the U.S. Supreme Court heard oral arguments in two patent cases concerning IPRs. The first case (Oil States Energy Services v. Greene’s Energy Group) has garnered much of the attention because it concerns the constitutionality of IPRs, but the second case (SAS Institute Inc. v. Matal) may actually have a bigger impact on how IPRs work. In SAS, the Supreme Court considered the PTAB’s practice of selecting which challenged claims it reviews, rather than, once it institutes a trial, issuing a final decision on the patentability of all claims challenged in the petition. The oral arguments suggest how the Justices are approaching the case.

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Topics: Petitioners, Patent Owners

Can I Get A Witness—With the Right Experience at the Relevant Time?

Posted by Kevin MacDonald on Oct 27, 2017

Kevin MacDonald

No matter whether you are the patent owner or petitioner in an IPR, expert witness testimony is an important aspect of building your case. The Board relies on expert witnesses to provide insight into the often highly technical aspects of a given case, and will inevitably choose to give more weight to the testimony of one side’s witness over the other. This can be especially true when the testimony of the opposing experts is in direct conflict. So how does the Board choose which expert testimony to give more weight? Sometimes it’s a question of timing, as in the recent decision in Mylan Pharmaceuticals Inc. v. AstraZeneca (IPR2015-01340).

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Topics: Petitioners, Patent Owners, BioPharma

Shifting Seas in Aqua Products as the Federal Circuit Eases the Burden of Amendment in IPR

Posted by Stuart Duncan Smith on Oct 11, 2017

Stuart Duncan Smith

To many patent owners in IPR, the prospect of a patent-saving claim amendment is all but illusory. The Board grants few motions to amend, which is one reason that few patent owners even request amendment. That may change with the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, which eased the patent owner’s burden of justifying an amendment, and increased the petitioner’s burden of opposing an amendment. This change affects not only the procedure of IPRs, which must now take into account the shifted burden, but also the strategy of IPRs.

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Topics: Patent Owners

Excusable Neglect? Missing the Appeal Deadline is Not Good, But May Not Be All Bad

Posted by Rob Jensen on Aug 2, 2017

Rob Jensen

Attorneys handling an IPR should never be neglectful, of course, but the director of the US Patent and Trademark Office (USPTO) recognizes that neglect in some circumstances is excusable. In a recent IPR, the USPTO determined that the patent owner’s late filed appeal was “excusable neglect”—i.e., not good, but not so bad that the patent owner should lose the right to appeal. Rather than inviting anyone to disregard deadlines, this case is a reminder for attorneys to avoid problems by communicating clearly with clients and co-counsel.

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Topics: Patent Owners

Patent Owners, Get Your Story Straight at the PTAB

Posted by Stuart Duncan Smith on May 17, 2017

Stuart Duncan Smith

Patent owners have long known that making consistent arguments during IPRs and in district court litigation is critical to preserve credibility. The Federal Circuit recently took that a step further by holding that patent owners can be prevented from making arguments in district court that contradict their arguments in an IPR. More so than ever, patent owners must watch what they say during an IPR.

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Topics: Patent Owners

Claim Amendment Déjà Vu All Over Again?

Posted by Ed Walsh on Aug 25, 2016

Ed Walsh

The Federal Circuit seemingly had put to rest the question of whether, in making an amendment in an IPR, the petitioner bears the burden of proving an amended claim unpatentable or the patent owner bears the burden of proving the amended claim patentable. Microsoft Corp. v. Proxyconn, Inc. upheld PTAB procedures placing the burden on the patent owner to prove patentability. Other CAFC panels—including Prolitec, Inc. v. ScentAir Techs., Inc. and Nike, Inc. v. Adidas AG—followed. Currently, claim amendments are evaluated in accordance with the PTAB’s guidance in Idle Free Systems, Inc. v. Bergstrom, Inc. and MasterImage 3D, Inc. v. RealD Inc. As set out in these cases, the patent owner must prove patentability over prior art of record, which includes the prior art cited in the original prosecution of the challenged patent, as well as prior art that the patent owner should put on the record in accordance with its duty of candor.

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Topics: Petitioners, Patent Owners

When One Door to an IPR Proceeding Closes, Another Opens

Posted by Nathan Speed on Mar 31, 2016

Nathan Speed

“When one door closes another door opens; but we so often look so long and so regretfully upon the closed door, that we do not see the ones which open for us.”  — Alexander Graham Bell

The AIA prohibits the PTAB from instituting an IPR proceeding “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” How, then, did Apple recently convince the PTAB to institute an IPR proceeding against two patents it was indisputably served with a complaint alleging infringement of more than five years earlier? 

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Topics: Petitioners, Patent Owners

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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.