PTABWatch Blog

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.

Recent Blog Posts

  • PTAB Bar Association Officially Launched We are pleased to share that the new Patent Trial & Appeal Board (PTAB) Bar Association launched Friday, September 16, 2016.  The organization will provide a forum for communications between the legal community and PTAB officials and its Administrative Patent Judges (APJs), particularly to share best practices and stay abreast of the rule making, procedure and jurisprudence emanating from the PTAB.  Marshall Gerstein is one of the founding firms. The Inaugural Annual Conference of the PTAB Bar Association will take place March 1... More
  • 3 Is a Magic Number for Mylan: 3 Teva Copaxone Patents Struck Down in IPRs In a series of unfortunate events for Teva Pharmaceuticals, three patents covering methods for administering the blockbuster multiple sclerosis (MS) drug Copaxone® (glatiramer acetate) (owned by Yeda Research and Development Co.) were struck down by the PTAB in recent IPR decisions (IPR2015-00830, IPR2015-00643, and IPR2015-00644).  These patents are directed to methods for administering Copaxone in a 40 mg dosage form, 3 times per week to treat relapsing-remitting MS:  U.S. Patent Nos. 8,232,250, 8,399,413 and 8,969,302.  Illustrative claim 1 of the... More
  • The Three-Front Assault: PeroxyChem Uses IPR, PGR and District Court to Challenge Opponent In what could become a common patent challenge strategy, PeroxyChem, a chemical company that sells products useful in water and soil remediation, has employed a three-front assault—combining the relatively young post-grant review procedure, with an IPR and litigation–to take on one of its competitors, Innovative Environmental Technologies (IET).  Litigation together with an IPR has become a rather common means to challenge a competitor’s patent. However, post grant review is gaining in popularity among litigants, adding to the available strategies of... More
  • Federal Circuit Confirms PTAB Can Cite Prior Art in IPR Final Decision That Was Not In Grounds Of Institution In a recent appeal from a PTAB final written decision, the Federal Circuit determined that a patentee was not denied notice or an opportunity to respond to references cited in the final written decision as representing the state of the art,  but that were not the basis for a grounds for institution.  (Genzyme Therapeutic Prods. Ltd. v BioMarin Pharm. Inc., Appeal Nos. 2015-1720, -1721 (Fed. Circ., June 14, 2016)).  The court concluded that there is no requirement, either in the... More
  • Patent Ineligibility Under §101 Continues Slow Ooze Over More Territory Biotech companies have increasingly found themselves the target of IPRs, and we have discussed this in some of our past posts.  Meanwhile, in the District Courts, biotech companies are defending against a new wave of challenges to the patent-eligibility of their inventions under 35 U.S.C. § 101.  While challenges under § 101 cannot be raised as grounds in an IPR, the PTAB has required proof of eligibility where patent owners have sought to amend their claims during IPRs.  In at least two... More
  • Another “Reasonable” Re-Interpretation by the Federal Circuit In a recent decision appealing the PTAB’s finding of claims unpatentable in two different, but related re-examination proceedings, the Federal Circuit vacated and remanded the Board’s decisions based on reinterpretation of claim terms construed under the PTAB’s broadest reasonable interpretation (BRI) standard during the re-examination process (In re Varma, Appeal 2015-1502 and 2015-1667, Fed. Circ., March 10, 2016).  This decision is one of several recent decisions in which the Federal Circuit has taken the opportunity to reinterpret the PTAB’s broadest “reasonable”... More
  • Cross-Pollination of Information From Litigation to IPR Can Lead to Trouble for Parties In a recent order by the magistrate judge in Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC (NJD, Jan. 22, 2016), defendants Amneal Pharmaceuticals and Par Pharmaceuticals were reprimanded and threatened with sanctions and monetary fines for trying to use confidential information from the litigation to move for additional discovery in a related IPR proceedings.  The judge ruled this behavior violated a Discovery Confidentiality Order (DCO) in place in the litigation.   Jazz sued generic drug makers Amneal and Par over generic versions of... More
  • Evidence From Prosecution and District Courts Not Excluded Two recent PTAB final written decisions illustrate the difficulty in convincing the PTAB to grant a motion to exclude evidence, in particular on the grounds of relevance, more particularly for evidence submitted in support of a party’s claim construction position. In Ericsson Inc. v Intellectual Ventures II LLC (PTAB-IPR2014-00915), the Patent Owner filed a motion to exclude evidence of documents in the prosecution history of a related European patent, as well as to exclude two publications that were published well after the... More
  • Coalition for Affordable Drugs PTAB Scorecard In the ongoing saga of the Coalition for Affordable Drugs (CFAD) vs. the pharmaceutical industry, there has been quite a bit of movement recently by the PTAB on institution of many of CFAD’s earliest-filed IPR petitions.  To date, CFAD has filed 33 petitions for IPR, some of them multiple petitions against the same patent, and there have been 17 institution decisions by the PTAB.  So, how does CFAD seem to be faring: are they having more or less success than... More
  • PTAB Requests Further Briefing on Petition for Sanctions Against Hedge Fund Coalition The PTAB recently revisited Patent Owners’ requests to file motions for sanctions against the Petitioner, Coalition for Affordable Drugs (“CFAD”).  The CFAD was started in conjunction with hedge fund manager Kyle Bass, who has been accused of filing IPRs in order to manipulate company stock price for his hedge fund’s monetary gain.  Recently, in Coalition for Affordable Drugs v Celgene Corp. (IPR2015-01169), the PTAB authorized Celgene to file a Petition for Abuse of Process against CFAD.  The Board ordered that... More