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
  • Squeezing the ‘Antibody Exception’ to Written Description into a Corner The PTAB has continued the trend of pushing the -“antibody exception” to written description into an ever-smaller corner. Claims to methods of using antibodies that bind Siglec-15 to impair osteoclast differentiation and inhibit bone resorption were deprived of priority because the parent application failed to disclose the “antigenic regions useful for generating antibodies having the desired functional properties.” Consequently, the claims were anticipated by the cited reference under 35 U.S.C. §102(a), and Patentee’s other evidence of prior conception, diligence and... More
  • Federal Circuit Provides Further Guidance on Administrative Procedures For Motions to Amend Claims In Nike, Inc. v. Adidas AG, Case No. 2014-1719 (Fed. Cir. Feb. 11, 2016) (appeal of IPR2013-00067), the Federal Circuit provided further guidance on the PTAB’s administrative procedures regarding motions to amend claims. After considering Nike’s argument that 35 U.S.C. § 316(e) places the burden of proving unpatentability on the petitioner in an IPR, the court reaffirmed its decision in Microsoft v. Proxyconn that the Patent Office has appropriately placed the burden on the patent owner to show patentability of... More
  • One Post-AIA Claim Risks PGR For All Claims In its seventh PGR institution, the PTAB recently decided for the first time that a patent asserting a pre-AIA effective filing date was eligible for post-grant review because it contained at least one claim that was only entitled to a post-AIA effective filing date.  Although some claims were entitled to a pre-AIA effective filing date, PGR was instituted for all of the patent claims, on all five of the prior art grounds asserted by the petitioner.  Inguran, LLC d/b/a/ Sexing... More
  • Broader is Better for the Petitioner, but Inherency is Intrinsically Difficult Two recent PTAB final written decisions highlight the benefits that the “broadest reasonable interpretation” standard for claim construction provides to Petitioners, as well as the difficulty Petitioners face in proving inherent anticipation.  The PTAB instituted two IPRs on the same patent: one on an anticipation ground, and another on an obviousness ground.  The Petitioner failed to prove anticipation, but prevailed on obviousness of all claims of the patent. Eli Lilly & Co. v. Los Angeles Biomedical Research Institute at Harbor-UCLA... More
  • PTAB Dismisses Biosimilar Company’s IPR Petition Without Prejudice, When Petitioner Loses its Expert The PTAB recently granted Celltrion’s motion to dismiss its IPRs without prejudice, after Celltrion suddenly lost its ability to rely on a key expert declaration.  Celltrion had filed IPR petitions against two patents covering use of Rituxan®, and had sought joinder with pending IPRs filed by Boehringer Ingelheim (BI) against the same patents.  Although Celltrion initially had permission to rely on testimony of BI’s expert, that permission was withdrawn after BI unilaterally requested adverse judgment in its IPRs. Left out... More
  • Hedge Funds Free to Heckle Without Risk of Sanctions Hedge funds and their affiliates are now free to heckle patent owners with IPR petitions, regardless of their admitted “profit motive.” On September 25, 2015, an expanded six-judge panel of the PTAB denied Celgene’s Motion for Sanctions against the Coalition For Affordable Drugs (CFAD).  Celgene had requested dismissal of five IPR petitions filed by CFAD because the petitions represent a misuse of inter partes reviews as an investment strategy and were “an ongoing abuse of the inter partes review process... More
  • Mind The Gap: The PTAB Will Not Bridge It For You Petitioners should beware gaps in their evidence and reasoning.  Two DepoMed patents recently survived their second IPR challenge because the petitioner failed to meet its burden of proof.  The PTAB rejected petitioner’s obviousness arguments as “overly vague and nonspecific,” concluding that petitioner failed to “explain persuasively why or how a person of ordinary skill in the art would modify the drug formulation” of the prior art to develop the claimed formulation, and failed to show a reasonable expectation of success. ... More
  • Petitioners Should Heed the PTAB’s Preference for Corroborated Witness Testimony In its third PGR institution decision, the PTAB provided its first guidance regarding witness testimony to support a showing of prior public use or sale in PGRs.  The decision is a cautionary tale that the PTAB strongly prefers corroboration of witness testimony, much like the corroboration required during interference proceedings.  This is not a surprise, given that the PTAB and its predecessor also presided over interference proceedings.  Thus, uncorroborated witness testimony, alone, will not be sufficient to show prior public... More
  • Patent Dispute Reform Legislation Is Now Pending in Both Houses of Congress The House of Representative’s Innovation Act, H.R. 9, was voted to the House floor for further consideration on June 11, by a 24-8 vote of its Judiciary Committee, after the Senate’s PATENT Act, S. 1137, was voted to the Senate floor on June 4 by a 16-4 vote of its Judiciary Committee.  See prior entry, “PTAB Review Reform in Bill Approved by Senate Committee.” Both bills target abusive litigation tactics and post-grant proceedings, IPRs and PGRs. Notably, amendments were introduced to... More