Pitfalls When Seeking Judicial Review of IPR Decisions: Alternatives to Appeal (Part 3 of 3)

Posted by Stuart Duncan Smith on Dec 21, 2020

Stuart Duncan Smith

Although judicial review of decisions during IPR typically occurs through appeal after the PTAB’s Final Written Decision, a growing number of cases are exploring other means of judicial review. Questions remain about whether those other means can provide a way to overcome the statutory limits on the appealability of IPR decisions, which we previously discussed. This post, which is the third in a series about judicial review of IPR, addresses a third trap for the unwary: the availability of alternatives to appeal.

Mandamus: Perhaps the most well-known alternative to appeal from and IPR is petitioning for a writ of mandamus. Ever since the Supreme Court’s first decision on IPRs, Cuozzo v. Lee, 136 S. Ct. 2131 (2016), left open the possibility of judicial review of constitutional and statutory rights related to institution, some have speculated that mandamus may be the best route to present those arguments. Indeed, the Supreme Court’s most recent decision on IPRs, Thryv v. Click-To-Call, 140 S. Ct. 1367 (2020), declined to foreclose the use of mandamus in “extraordinary cases.”

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Topics: "Federal Circuit", IPR, PTAB, SCOTUS, Supreme Court

Pitfalls When Seeking Judicial Review of IPR Decisions: Scope of the Appeal (Part 2 of 3)

Posted by Stuart Duncan Smith on Dec 16, 2020

Stuart Duncan Smith

A series of Supreme Court cases has clarified that not all issues that arise in IPR are appealable. Thus, in addition to considering the issue of standing, which we previously discussed, a party considering appeal must also determine whether the issue it would want review can even be appealed. This post, which is the second in a series about judicial review of IPR, addresses a second trap for the unwary: the limited scope of permitted appeal.

Section 314(d) prohibits appeal of the PTAB’s decision “whether to institute [IPR] under this section.” Some interpreted that as limiting appeal only of the Institution Decision’s determination under Section 314(a) that the petition’s unpatentability arguments are sufficiently strong to deserve institution. The Supreme Court rejected that interpretation in Cuozzo v. Lee, 136 S. Ct. 2131 (2016), applying the appeal bar to the related determination under a different section that the petition was written with sufficient “particularity.”

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Topics: "Federal Circuit", IPR, PTAB, SCOTUS, Supreme Court

The Rising Tide of Discretionary Denial at the Patent Trial and Appeal Board

Posted by Stuart Duncan Smith on Dec 14, 2020

Stuart Duncan Smith

(Co-authored by Elisabeth Hunt)

In the time since the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB), inter partes review (IPR) and other PTAB proceedings for challenging patents’ validity have proven to be powerful tools for those accused of infringement. But increasingly, the PTAB’s exercise of its discretion to deny institution of review for non–merits-based reasons has become a powerful counter-defense for patent owners. Although discretionary denial has been a feature of PTAB proceedings since their inception, the range of circumstances in which the PTAB discretionarily denies institution and the frequency with which it does so are increasing. Discretionary denial has thus become a disputed issue in an increasingly large proportion of PTAB proceedings.

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Topics: IPR, PTAB, AIA, Discretionary Denial

Pitfalls When Seeking Judicial Review of IPR Decisions: Standing to Appeal (Part 1 of 3)

Posted by Stuart Duncan Smith on Dec 10, 2020

Stuart Duncan Smith

Seeking judicial review of an IPR decision can be a trap for the unwary. Section 319 permits a “dissatisfied” party to appeal. And while the language may seem simple, it can lead parties astray. This post, which is the first in a series about judicial review of IPR, addresses the first trap for the unwary: the constitutional requirement of standing.

Although Section 319 might be misread to allow any “dissatisfied” party to appeal, the party must still have standing to appeal. Thus, in Droplets v. E*TRADE, 887 F.3d 1309 (Fed. Cir. 2018), the Federal Circuit held that a petitioner that won but was “dissatisfied” with the PTAB’s reasoning still could not appeal. And in SkyHawke v. Deca, 828 F.3d 1373 (Fed. Cir. 2016), a potentially analogous decision concerning reexamination, the court rejected an appeal by a winning patent owner that wanted a different claim construction.

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Topics: "Federal Circuit", IPR, PTAB, Section 319

Uniloc 2017 v. Hulu: Federal Circuit Says PTAB’s Review of Substitute Claims Is Not Limited to Anticipation and Obviousness

Posted by Kevin Mosier on Aug 31, 2020

Kevin Mosier

Per the express language of 35 U.S.C. § 311, a petitioner in an IPR may request cancellation of a claim “only on a ground that could be raised under section 102 or 103.” In other words, an issued claim can only be canceled via IPR on the basis of anticipation or obviousness grounds. But once an IPR is instituted, can the PTAB also make eligibility determinations pursuant to section 101 and/or written description or enablement determinations pursuant to section 112? The answer is, in certain circumstances, “yes” according to the Federal Circuit in Uniloc 2017 v. Hulu, No. 2019-1686 (Fed. Cir. July 22, 2020).

In Uniloc 2017, the petitioners challenged the patent owner’s claims as anticipated and obvious. The patent owner defended the claims and also filed a contingent motion to amend requesting that, in the event certain claims were found unpatentable, the PTAB issue substitute claims pursuant to section 316(d). The petitioners opposed the motion to amend, arguing that the proposed substitute claims were directed to patent ineligible subject matter.

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Topics: Obviousness, "Federal Circuit", IPR, PTAB, Anticipation

No Pain Relief at the PTAB: Inherent Obviousness

Posted by Jessica Chao on Jul 14, 2020

Jessica Chao

Even when certain elements in a claimed method are not expressly disclosed in the prior art, the claim can still be held obvious if the missing elements are supplied in the form of an inherent property. In the pharmaceutical context, the PTAB decision in Dr. Reddy's Laboratories, Inc. v. Pozen Inc. (IPR2018-00894; PTAB 2019) illustrates the continuing difficulty in claiming methods of administering a known two-drug pharmaceutical composition with an expected pharmacokinetic and pharmacodynamic (PK/PD) profile. The patent at issue covers methods of administering morning and afternoon daily doses of the arthritis pain reliever Vimovo®. Specifically, the claims recite particular PK/PD profiles, including the highest plasma concentration of the drug following administration, drug bioavailability, and amount of drug exposure for compositions of naproxen (a nonsteroidal anti-inflammatory drug “NSAID”) and esomeprazole (a proton pump inhibitor (PPI)). Esomeprazole is used in conjunction with naproxen to reduce the risk of gastrointestinal injury from naproxen by raising the gastrointestinal tract pH.

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Topics: Inherency, PTAB

Hulu v. Sound View: The PTAB Sets New Precedent on How to Prove a Reference Is a Printed Publication

Posted by Stuart Duncan Smith on May 19, 2020

Stuart Duncan Smith

Invalidity grounds in IPR that are not based on patents must be based on printed publications. But the nature of the evidence required at the time of institution to show that a non-patent reference is a printed publication has long been uncertain. The PTAB’s Precedential Opinion Panel (POP) in Hulu v. Sound View Innovations, IPR2018-01039 (Dec. 20, 2019), provided some clarity and left other issues for future PTAB panels to resolve.

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Topics: Printed Publications, PTAB, POP

Appearing Before PTAB During COVID-19: What You Need to Know

Posted by Stuart Duncan Smith on May 12, 2020

Stuart Duncan Smith

This blog post is part of Wolf Greenfield's COVID-19 Resource Center. To access the full resource center, click here.

Appearing before the Patent Trial and Appeal Board (PTAB) looks different as a result of COVID-19. The PTAB recently held a “Boardside Chat” to talk about how PTAB practice has changed. Here are some important changes practitioners should know regarding case management, CARES Act extensions and remote hearings at the PTAB.

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Topics: PTAB, COVID-19

The Supreme Court Says the PTAB, Not the Federal Circuit, Gets to Say Whether an IPR is Outside the One-Year Time Bar

Posted by Susmita Gadre on May 7, 2020

Susmita Gadre

(Co-authored by Stuart Duncan Smith)

Last week, the Supreme Court released its opinion in Thryv, Inc. v. Click-to-Call. This case, as we previously reviewed, concerns whether the PTAB’s application of the one-year statutory time bar for an IPR is appealable. The Patent Statute says that the PTAB’s decision to institute an IPR is “final and nonappealable,” but the Federal Circuit interpreted that bar on judicial review narrowly and found it inapplicable to the question of whether the one-year statutory time bar applied. Oral arguments suggested that the Court would likely be divided. Ultimately, the court was split 7-2, with the majority holding that the time bar was not an appealable issue.

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Topics: "Federal Circuit", IPR, PTAB

Using Prosecution History in IPR: What You Say May Come Back to Help You

Posted by Stuart Duncan Smith on Mar 19, 2020

Stuart Duncan Smith

Prosecution history can be a minefield in patent cases, and IPR is no different. In the context of construing patent claims, much of the focus is often on whether the patent owner disclaimed particular subject matter from the scope of the claims. But two recent Federal Circuit decisions reviewing decisions in IPR illustrate that even absent disclaimer, patent owners may be able to save the challenged claims by pointing to their past statements during prosecution.

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Topics: Patent Owners, "Federal Circuit", PTAB

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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.