Posts Tagged: "Patent Trial and Appeal Board"

USPTO denies Kyle Bass IPR patent challenge against Acorda Therapeutics

The USPTO declined to initiate an inter partes review of two patents owned by Acorda Therapeutics, Inc. Acorda patents were challenged by the Coalition for Affordable Drugs, LLC, the entity formed by billionaire hedge fund manager Kyle Bass. I have to wonder whether this decision represents a shift in the worldview of the PTAB or whether they sought out a reason to deny the petition because it was filed by Kyle Bass. Unfortunately, I suspect these two denials have everything to do with who was behind the challenge and little to do with the merits of the challenge.

PTAB must evaluate district court claim construction to determine whether it is consistent with BRI

Even though the Board is generally not bound by the district court’s construction of claim terms, it does not mean that “it has no obligation to acknowledge that interpretation or to assess whether it is consistent with the broadest reasonable construction of the term.” Here, given that PI’s main argument was the proper interpretation of the term “coupled,” which was construed by the district court, the Board had an obligation “to evaluate that construction and to determine whether it was consistent with the broadest reasonable construction of the term.” Because the Board failed to address the district court’s interpretation of the term “coupled” and failed to provide adequate explanation for its decision to reject the claims as anticipated, the Court reversed and remanded.

Overview of USPTO proposed rule changes to practice before the Patent Trial and Appeal Board

USPTO proposed rule changes would amend the existing rules relating to trial practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered business method patents (CBM), and derivation proceedings. By in large, the Office decided to stick with BRI, but not when the challenged patent will soon expire. The USPTO also adopted the comments from those who expressed satisfaction with the Board’s current rules and practices for motions to amend, which means there will be a right to file a motion to amend but no right to amend if these proposed rules go final.

Federal Circuit Review – Issue 60 – July 23, 2015

This week in the Federal Circuit Review: (1) Proposed rejections to claims added during Inter Partes Reexamination are not evaluated for substantial new question of patentability (Airbus S.A.S., v. Firepass Corp.); and (2) Likelihood-of-Confusion requires full consideration of strengths and weaknesses of existing mark (Juice Generation, Inc., v. GS Enterprises LLC ).

Thoughts on Ex parte Khvorova

Ex parte Khvorova is the first PTAB decision on patent eligibility in the life sciences. Until now, the PTAB has been remarkably silent on eligibility in life sciences in the midst of significant judicial activity. The invention relates to synthetically designed and produced small interfering RNA (“siRNA”) molecules, which were discovered in nature for their ability to suppress gene expression. Claim 85 recites a method of rationally designing siRNA molecules with optimal suppression efficacy.

Study of the Post Grant Procedures Is Needed Now

Very few thought that the IPR procedure would be used by creative hedge fund managers to reap benefits for the price drop of pharmaceutical companies’ stock that have had their important drugs challenged in an IPR. Most would not have thought that small patent owners would be swamped by serial petitions to invalidate their patents. Others were very surprised at the limited manner in which the USPTO permitted the patent owner to amend her claims during the process. And many did not expect the USPTO to interpret statutory language of the AIA to include so much subject matter in what was intended to be a limited-scope CBM program.

Post Grant Patent Challenges Concern Universities, Pharma

Gulbrandsen’s chief complaint with the U.S. system centers around the fact that it has become enormously easy to challenge issued patents once they have been granted. In fact, organizations in pursuit of acquired technology are leveraging the kill-rate at the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO), to negotiate lower licensing payments. Threats are made that patents will be challenged in Inter Partes review, “so that you amend the license and reduce the fees,” Gulbrandsen explained. “So, immediately you know that devalues the patent and devalues the license agreement that you’ve got.”

USPTO makes changes to AIA post grant proceedings

The immediate modification to the page limits for motions to amend is more in line with reality given the high burdens placed on patent owners. Even when patent owners sought additional pages, the norm was a three to five page extension. So getting ten extra pages is a welcome change. Changing the page limits, alone, is unlikely to impact the calculus underlying the strategic choice to amend. But when the choice is made to amend, patent owners will be better able to meet their burden.

Case Challenging Constitutionality of Inter Partes Review Continues to 4th Circuit

Inter partes review proceedings unconstitutionally assign to an Article I executive branch tribunal matters reserved for Article III Judges that make up the Federal Judiciary. This is in violation of Separation of Powers principles, which is particularly problematic given that we are talking about property rights being stripped from patent owners by administrative law judges in a proceeding designed to be a district court alternative. These administrative tribunals also adjudicate patent validity without a jury, in violation of patentees’ Seventh Amendment rights.

CAFC Affirms PTAB in First Inter Partes Review Appeal

Writing for the panel majority, Judge Dyk, who was joined by Judge Clevenger, explained that regardless of whether the USPTO properly should have instituted an IPR, the decision of the USPTO could not be reviewed or challenged even after a completed IPR proceeding. Further, the CAFC found that the broadest reasonable interpretation standard is appropriate in IPR. Judge Newman dissented.

USPTO Considering Changes to PTAB Rules

At the end of July, the Patent Trial and Appeal Board (PTAB) hosted a press conference to discuss ongoing progress with patent trials which have been or are being conducted under the terms of the America Invents Act (AIA). Scott Boalick, Acting Vice Chief Judge of the PTAB and head of the PTAB’s Trial Section, answered questions from the audience on various aspects of the AIA trials, as well as offer questions for public comments being sought by the U.S. Patent and Trademark Office in its attempts to determine how and if the AIA patent proceedings can be improved.

How to Protect Your Patent from Post Grant Proceedings

Patent owners must modify their strategies during prosecution to make their patents and portfolios less susceptible to post grant challenges. This strategy must take into account the cost of filing a petition by a challenger. Patent owners must obtain enough claims and enough patents to make it extremely expensive for a challenger to go down the path toward an administrative patent trial where the deck is stacked against the patentee. This will require patent owners to obtain patent claims with numerous dependent claims that cover as many variations as possible, but also to ensure that the dependent claims build on one another little by little so as to create a claim set that refers back to as many previous claims as possible. Such a claim mosaic will raise the filing fee that must be paid to institute a post grant challenge.

The Past, Present and Future of Post Grant Administrative Trials

Between September 16, 2012, and August 7, 2014, there were 1793 post grant challenges instituted. See USPTO PTAB Update, slide 5. Of those challenges 1,585 (or just over 88%) were inter partes reviews. There have been 201 covered business method challenges, 6 derivation proceedings and only a single post grant review… Prior to enactment of the AIA it was believed that bio/pharma would largely be spared from post grant challenges. Biotech and pharmaceutical companies tend to have fewer patents and do not collect patents in the same way that electronics and software companies do. Furthermore, biotech and pharma patents tend to be more detailed and overall of a higher quality than your average patent. Given the relatively few patents that these companies hold that cover core assets even 5.2% of post grant challenges coming from the bio/pharma space is surprising. No patents are safe from post grant challenge it seems.

Is that Next RCE Really Going to Work?

Knowing when to give up on a patent application is one of the most critical questions facing for any patent applicant… When faced with the decision regarding whether to file an RCE or file an Appeal, the desire to not give up and to hopefully obtain a patent can easily lead any application to elect to the file a Request for Continued Examination (RCE). This is true for the cost reasons already stated, but also because filing an RCE you will undoubtedly get treatment much faster than going on the appeal track, and there is always hope that additional time working with the patent examiner will yield patentable claims. Of course, sometimes filing that next RCE is going almost certainly accomplish nothing.

The PTAB Kiss of Death to University of Illinois Patents

What seems to be happening is that the PTAB is literally applying KSR v. Teleflex in a way that many initially feared it would be applied, but in a way it has never been interpreted by the Federal Circuit. Under a literal reading of KSR nothing is patent eligible… If you are a defendant in a patent infringement litigation and you haven’t filed an inter partes review, what are you waiting for? The Patent Office giveth with the examiners allowance and taketh away with a PTAB decision. As long as the PTAB is killing patents can you blame defendants and their lawyers? It would be practically malpractice for a defense attorney in a patent infringement case to fail to recommend seriously considering inter partes review.