Patent Filings Roundup: Inventors File IPRs On Own Patents; Johnson & Johnson Feels the NHK Spring Bite in Texas Suture Suit

District court patent filings are back down to roughly double the number of Patent Trial and Appeal Board (PTAB) filings, with 65 new complaints to the PTAB’s 28 new inter partes reviews (IPRs) and one post grant review (PGR). The complaints were driven by the Rothschild entities, adding defendants to existing campaigns, and a fair number of pharmaceutical complaints.

Inventors Challenge Own Patents: It’s not uncommon these days; here we have another case of a company that successfully sells itself to a large corporate entity, and the exited inventors, who then turn around and form a new company, compete, and provoke a suit from their erstwhile purchasers. Becton, Dickinson & Co. purchased HandyLab and all rights and titles to their small patent portfolio, as well as their original molecular diagnostic testing capabilities, which launched  BD’s expansion into the field; the Ann Arbor-based (Go Blue!) founders turned around and formed what eventually became NeuMoDx Molecular, Inc.; now BD is accusing them of infringing—you guessed it—the patents for their own inventions.

Now NeuMoDx (itself now owned by QIAGEN N.V.) has cried foul, asking the PTAB to reconsider their grant of the six patents now asserted against them, arguing the patents their founders applied for and were granted way back when never should have been granted. It’s an interesting inversion; thus far four IPRs have been filed, most recently IPR2020-01095 and IPR2020-01091 this week, with two more promised to round out the set. It’s basically the original inventors asking for a second look.

Stipu-late to the Party: In an effort to head off any NHK Spring-based Section 314 discretionary denial arguments in light of trial date, petitioner Apple unconditionally stipulated to not raise the same prior art and arguments raised in the petition in district court in a post-grant review filed this week. They’re hoping to avoid denial based on NHK and absolve the Board of any concerns about administrative conflict. It’s an interesting tactic I hadn’t seen before, one that says more about the real concern confronting infringement targets when trying to decide whether to file administrative challenges. The case is PGR2020-00066, filed by Fish & Richardson.

The patents cover, among other things, microfluidic devices found in diagnostic testing kits.

NHK Spring Denial Despite No Set Western District Trial Date:  This week it was Johnson & Johnson’s turn to have their petition turned away unconsidered—here over an impending Western District of Texas trial date imminent largely due to the Board’s own staying of the petition’s consideration for years.  Let’s step back: In 2017, the University of Texas had sued J&J’s Ethicon subsidiary over medical suture technology. Then, months later in 2018, J&J promptly filed IPR2019-00406 and IPR2019-00407. But the petitions were stayed (via hail Mary motion) in light of the sovereign immunity challenges then before the Federal Circuit, and then the Supreme Court for certiorari. (Plaintiff/Patent Owner University of Texas Regents are an arm of the state.)

After cert was denied and the issue settled, they unstayed the cases. By then, however, the District Court trial was moving along in the Western District, and was scheduled for June 22—which it later suspended and pushed back, with no firm date set, but with assurances that trial was as imminent as possible in light of COVID-19.

Notably, the Board denied institution of just one of the two petitions under their NHK Spring discretion, as only one of the two patents remained in that particular litigation; as to the other, they instituted, ignoring 314. In the denial, the Board found there was “no evidence to suggest that the Western District of Texas would entertain granting a stay at this late stage even if inter partes review, were instituted,” and quoted the judge’s assurances the parties that a trial would be held within a year and they should proceed as if the case was set for trial.