Big Changes Come to Post-Grant Trials: Claim Construction Standards and SAS

Posted by Ed Walsh on May 9, 2018

Ed Walsh

Two recent events will drive big changes in ongoing and future post-grant trials (IPR, PGR and CBM). The PTAB has just announced that it intends to abandon the “broadest reasonable” claim interpretation standard in favor of the “plain and ordinary meaning” standard used in district court litigation. This change mutes what has historically been an important advantage for petitioners: the ability to challenge the validity of claims based on a claim construction that (a) made it easier to show invalidity than the claim construction standard used in court; (b) did not require the petitioner to commit to a claim construction applicable to an infringement trial; and (c) allowed the petitioner to use the patent owner’s assertion of broad claim scope against it, even if the petitioner contested that claim scope in court. The change could go into effect as early as July 8, and would apply to pending as well as future post-grant trials.

Read More

Topics: Broadest Reasonable Interpretation Standard

SAS Institute: A Refresher on the “Other” IPR Case at the Supreme Court

Posted by Stuart Duncan Smith on Apr 22, 2018

Stuart Duncan Smith

As discussed in our prior post, the Supreme Court is poised to issue decisions in two cases about IPRs. The first case is Oil States Energy Services v. Greene’s Energy Group, which could eliminate IPRs and gut the PTAB role in reviewing issued patents. The second case, SAS Institute Inc. v. Iancu, could balloon the PTAB’s workload with new requirements. Although SAS has not garnered the limelight like Oil States, its potential to reshape IPRs is just as significant. The issue at stake—the propriety of the PTAB’s practice of instituting review on only some of the challenged claims rather than all of the challenged claims—does not threaten to eliminate IPRs entirely. SAS does, however, raise the possibility of a dramatic change in how IPRs occur, how they are reviewed in the courts, and how they affect litigation. 

Read More

The End of Days for IPRs? A Refresher on Pending Supreme Court Decisions

Posted by Stuart Duncan Smith on Apr 20, 2018

Stuart Duncan Smith

The Supreme Court is poised to issue decisions in two IPR-related cases that some predict will end IPRs as we know them. One of the cases, Oil States Energy Services v. Greene's Energy Group, could eliminate IPRs and gut the PTAB’s role in reviewing issued patents. The other case, SAS Institute Inc. v. Iancu, could balloon the PTAB’s workload and could expose those requesting review of patents to greater risk if they fail to fully make their case.

As with all prophecies of the end (so far), prophesies of the end of IPRs could also be premature, as the Supreme Court could simply allow IPRs to continue in their current form. Read on for a brief refresher on the context of Oil States, and stay tuned for a preview of SAS. We will also cover the decisions as they come down, so be sure to subscribe to get the latest news. 

Read More

Federal Circuit Says: Mind the “Plainly Obvious” Gap

Posted by Ed Walsh on Mar 27, 2018

Ed Walsh

In DSS Technology Management v. Apple, the Federal Circuit reversed a holding of unpatentability of claims that the PTAB considered plainly obvious in an IPR. The Federal Circuit found that merely stating that the claims were obvious did not fill a gap in the case of obviousness, such that the PTAB had failed to provide a sufficient explanation for its conclusion. The Federal Circuit then reversed the finding of obviousness (rather than remanding for the PTAB to elaborate), reasoning that there was insufficient evidence in the record to enable the PTAB to offer an adequate explanation—leaving the claims intact.

Read More

Is Live Testimony a Dead Issue at the PTAB?

Posted by Austin Steelman on Mar 19, 2018

Austin Steelman

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.

Read More

Topics: Experts

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.

Read More

Topics: Petitioners, Patent Owners

Discretionary Denial: Even the “Best” Prosecution Prior Art May Not Be Right for an IPR

Posted by Josh Miller on Feb 7, 2018

A pair of recent PTAB institution decisions highlights that petitioners should be cautious when relying on prior art that was cited during the prosecution of the challenged patent. Pursuant to 35 U.S.C. § 325(d), the PTAB has the discretion to deny institution if the petition relies on prior art or arguments that the examiner already addressed during patent prosecution. In two recent decisions that issued just one day apart and reached opposite conclusions, the PTAB provided some insight into circumstances that may lead to (or away from) a discretionary denial.

Read More

PTAB Left to Mitigate the Damage from Collateral Estoppel

Posted by Nathan Speed on Jan 30, 2018

Nathan Speed

Collateral estoppel, or issue preclusion, is the legal doctrine that bars a litigant from re-litigating in subsequent litigations an issue that it lost in an earlier litigation. The doctrine had been applied in the administrative context previously, and in Maxlinear, Inc. v. CF Crespe, the Federal Circuit confirmed that it applies in IPR proceedings. In doing so, however, the court left the Board to resolve an interesting practical question as to how exactly collateral estoppel should apply on remand. Depending on how the Board resolves this practical issue, Maxlinear may provide petitioners a significant windfall as they will be able to challenge claims on the basis of prior art that they never cited to the Board. 

Read More

Topics: IPR Estoppel

For PTAB Declarations, Better to Fly Solo

Posted by John Strand on Jan 22, 2018

John Strand

Many things in life are better done with someone else: board games, dinner parties, road trips, riding tandem bicycles. However, according to the PTAB, there’s one particular area where it’s best to fly solo: two people should not provide one declaration in an IPR. In CSL Behring GMBH v. Shire Viropharma Inc. (IPR2017-01512), the PTAB denied institution in large part because the petitioner submitted a joint declaration to support that one of its references was a printed publication.

Read More

Topics: Printed Publications

Proving Them Wrong: FDA Skepticism Helps Save Patent Claims

Posted by Phil Hamzik on Jan 17, 2018

Phil Hamzik

Evidence of skepticism of others in an IPR can be used to support the patentability of claims in response to obviousness challenges—skepticism is a standard “objective indicia” or secondary consideration of nonobviousness. In a recent series of IPRs filed by several generic drug makers against Eli Lilly & Co. (IPR2016-00318, IPR2016-00237 and IPR2016-00240), Eli Lilly bolstered its case for nonobviousness by pointing to the skepticism of the U.S. Food & Drug Administration (FDA) concerning its patented method. The PTAB’s decision illustrates that while skepticism by some may be helpful to patent owners, skepticism by the right people may be critical.

Read More

Topics: BioPharma, Obviousness

Wolf Greenfield's Post-Grant Blog

Here, the Post-Grant Proceedings Group
at Wolf Greenfield keeps you up to date
on the latest decisions and best practices, and what they mean for you. Learn more about the group and its members.

New Call-to-action
New Call-to-action
New Call-to-action

Subscribe to Email Updates

Recent Posts

Follow Us

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.