Posts Tagged: "IPR institution decisions"

PTAB Precedential: Two Decisions Against Exercising Discretion to Deny Institution Made Precedential

On December 17, the U.S. Patent and Trademark Office (USPTO) designated two opinions as precedential, both decisions where the PTAB considered the so-called Fintiv factors and decided against exercising its discretion to deny institution of the inter partes review (IPR) challenges. In Sotera Wireless, Inc. v. Masimo Corporation, the PTAB addressed the Fintiv factors and noted that a petitioner’s broad stipulation not to pursue in district court proceedings any ground that it raised, or could have raised, in the inter partes review weighs strongly in favor of institution. In Snap, Inc. v. SRK Technology LLC, also analyzing the Fintiv factors, the PTAB explains that a district court stay that would remain in place until an inter partes review final written decision weighs strongly in favor of institution.

PTAB Trends: More Orange Book Patents Are Surviving the ‘Death Squad’

Since its inception, the Patent Trial and Appeal Board (PTAB) has been a frequent venue for patent challenges in the pharmaceutical and biotechnology industries. By the end of the U.S. Patent and Trademark Office’s (USPTO’s) 2018 fiscal year, patents in those fields were targeted in nearly 10% of all petitions for inter partes review (IPR), totaling approximately 900 individual petitions. Of these 900 petitions, roughly 5% challenged patents listed in the FDA’s Orange Book for approved drug products. The remaining petitions challenged biologic drugs (1.3%) and other biologic-, biotechnology-, or pharmaceutical-related patents (3.5%). Many of these petitions have ultimately resulted in the cancellation of all challenged claims, including those of a significant number of Orange Book patents. Based on the PTAB’s initial high rate of claim cancellation in pharma and other areas, critics of the PTAB were quick to deem it a patent “death squad.” Does the PTAB still deserve the “death squad” label when it comes to Orange Book patents? In this article, we examine the rates of challenge, institution, and final written decision outcomes for patents listed in the Orange Book, from the PTAB’s inception through the end of its 2018 fiscal year.

PTAB Institutes IPR, Finds Unified Patents is Sole Real Party in Interest

On Tuesday, November 27th, the Patent Trial and Appeal Board (PTAB) issued a redacted version of a decision to institute an inter partes review (IPR) proceeding petitioned by Unified Patents to challenge the validity of patent claims that have been asserted in district court against at least one of Unified’s subscribing members. The PTAB panel of administrative patent judges (APJs) decided to institute the IPR despite the patent owners’ assertion that the petition should be denied because Unified didn’t identify all real parties in interest (RPIs) including members of Unified’s Content Zone. The charade that Unified is the only real party in interest and simply acts in uncoordinated ways and not at the behest of those who pay for them to challenge patents continues, at least at the PTAB.

SharkNinja Denied by PTAB, IPR Petition to Vacuum Cleaner Hose Patent Not Instituted

The Patent Trial and Appeal Board issued a decision denying the institution of an inter partes review (IPR) proceeding petitioned by home appliance developer SharkNinja. The decision leaves in place all claims of a patent asserted against SharkNinja in U.S. district court through a patent infringement case filed by appliance hose manufacturer Flexible Technologies. In denying SharkNinja’s petition for IPR, the PTAB panel of Administrative Patent Judges (APJs) found that implementing the hose found in Rohn to be a stretch hose as taught by Martin would render Rohn’s hose inoperable for its intended purpose… As for the Nagayoshi prior art reference, the PTAB sided with Flexible Technologies in finding that SharkNinja’s asserted combination is difficult to distinguish from a hindsight analysis…

Federal Circuit Vacates PTAB Decision for Failure to Consider Ericsson Reply Brief

In its decision, the Federal Circuit noted that the PTAB is entitled to strike arguments improperly raised in a reply brief under 37 CFR § 42.23(b). However, the appellate court disagreed that Ericsson raised a new theory in its reply brief and thus the Board erred in not considering those portions of the reply brief. “The Board’s error was parsing Ericsson’s arguments on reply with too fine of a filter,” the Federal Circuit found. Ericsson’s petition for IPR described how a person with ordinary skill in the art would be familiar with the concept of interleaving. The CAFC further found that the PTAB’s error was exacerbated by the fact that the new claim constructions proposed by Intellectual Ventures after institution gave rise to the significance of interleaving in the proceeding. In light of this, the Federal Circuit found that Ericsson deserved an opportunity to respond to the new construction.