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 Warns Again That Prosecution Declarations Without Depositions May Be Given Little or No Weight If you rely in an IPR on a declaration submitted during prosecution, the PTAB may give it little or no weight if your opponent cannot cross-examine the declarant. In Praxair Distribution, Inc. v. INO Therapeutics LLC, the PTAB instituted inter partes review of U.S. Patent No. 8,846,112, directed to methods of providing nitric oxide gas for treating newborn children suffering from hypoxia. In response, the Patent Owner relied not only on a supporting expert declaration, but also on three declarations submitted during... More
- Federal Circuit Tells Patent Owners That They Can’t Get It If They Don’t Ask For It If you’re a patent owner faced with an expert declaration submitted by an IPR petitioner on reply, try to respond, and in multiple ways. Don’t just complain that the declaration should be excluded. This was the Federal Circuit’s recent message in Belden Inc. v. Berk-Tek LLC. The court’s decision is noteworthy for a few reasons. On the merits, the Federal Circuit not only affirmed the PTAB’s decision that certain claims were obvious; it also reversed the decision that the remaining claims... More
- PTAB Denies Institution of Another Investment Fund IPR Petition, Refusing to Ignore Claim Limitation Under BRI Standard Score another win for pharma against investment funds-turned-IPR petitioners. On September 21, 2015, the PTAB denied institution of Ferrum Ferro Capital, LLC’s (“FFC”) petition for IPR of an Allergan patent claim related to its Combigan® eye-drop product for treating glaucoma. This dispute has attracted publicity for having bled into the courts, where Allergan has sued FFC for extortion, unfair competition, and malicious prosecution. The PTAB’s non-appealable denial of FFC’s petition is obviously a significant victory for Allergan, and follows the... More
- Federal Circuit Affirms Seven CBM Decisions In a non-precedential decision issued on August 24, 2015, the Federal Circuit affirmed the final decisions of the PTAB in seven overlapping covered business method patent reviews. In those reviews, Liberty Mutual Insurance Company challenged claims in five patents owned by Progressive Casualty Insurance Company, all directed to pricing automobile insurance based on vehicle use or online adjustment of insurance policies. In the Federal Circuit’s decision—its second addressing the merits of a CBM review—the court affirmed the PTAB’s decisions that... More
- Pharma Patent Owner Attacks Bass IPR Petitions by Requesting Discovery of Real Parties-In-Interest A picture can be worth a thousand words. This one illustrates the complex web of actual and potential real parties-in-interest (RPIs) that a pharmaceutical patent owner is attempting to pierce for two IPR petitions recently filed by Coalition For Affordable Drugs II—one of several similarly-named creations of hedge-fund manager Kyle Bass and his Hayman Credes Master Fund. It’s also an example of attacking IPR petitions by seeking discovery of RPIs. Attacking IPR petitions regarding RPIs We’ve earlier discussed attacking IPR petitions for... More
- Claims Found Obvious Even Though Petitioner Waited Until Reply to Present Expert Testimony It’s well understood that waiting until reply to present any expert testimony comes with a risk that the testimony will be excluded. But that’s not what happened in a recent IPR, where a petitioner waited until reply to present such testimony, and the PTAB, in view of the straightforward nature of the technology, found the challenged claims obvious. Background On May 28, 2015, the PTAB issued its final written decision in First Quality Baby Products, LLC, v. Kimberly-Clark Worldwide, Inc., regarding U.S.... More