During the week of January 14–19, 2019, the Patent Trial and Appeal Board (“the Board”) issued 5 IPR institution decisions, 1 IPR final written decision, 1 PGR institution decision, and 1 PGR final written decision in TC 1600. Continue Reading PTAB Tech Center 1600 Round-Up: Week of January 14-19, 2019
During the week of January 21, 2019, the Patent Trial and Appeal Board (“the Board”) issued two decisions in TC 1600. In those, the Board denied institution of inter partes and post-grant reviews. Continue Reading PTAB Tech Center 1600 Round-Up: Week of January 21-25, 2019
We previously published a post on the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., and Helsinn’s subsequent petition for certiorari.
On January 22, 2019, the Supreme Court affirmed the Federal Circuit in a unanimous decision, holding that a commercial sale to a party who is required to keep the invention confidential can still constitute prior art Continue Reading Helsinn Update: The Supreme Court Preserves the Substance of the Pre-AIA On-Sale Bar
During the week of January 7, the Patent Trial and Appeal Board (“the Board”) issued four decisions in TC 1600, one denying institution of inter partes review (“IPR”) and three final written decisions. Summaries of the decisions follow: Continue Reading PTAB Tech Center 1600 Round-Up: Week of January 7-11, 2019
In Amerigen Pharmaceuticals v. UCB Pharmaceuticals, the Federal Circuit held that a generic Abbreviated New Drug Application (“ANDA”) filer with a Paragraph III certification to an Orange Book-listed patent has standing to appeal decisions from the Patent Trial and Appeal Board (“the Board”). Case No. 17-2529, Doc. 54, January 11, 2019 (the “Decision”). In this case, Amerigen was a Petitioner in inter partes review proceedings involving U.S. Patent No. 6,858,650 (“the ’650 patent”). The Board found the challenged claims not unpatentable, and Amerigen appealed. On appeal, UCB argued that Amerigen lacked standing to appeal because Amerigen had filed a Paragraph III certification with its ANDA. The Federal Circuit disagreed.
During the week of December 17, 2018, the Patent Trial and Appeal Board (“the Board”) issued five decisions in TC 1600. Those decisions instituted inter partes review (“IPR”) of five petitions, four of which involved related patents. As detailed below, the Patent Owners did not substantively challenge the petitions at the Preliminary Response stage, but instead opposed institution on procedural grounds—namely, failure to name a real party in interest or duplicative issues under 35 U.S.C. § 325(d).
Merck Sharp & Dohme Corp. v. GlaxoSmithKline Biologicals SA, Nos. IPR2018-01229; IPR2018-01234; IPR2018-01236; and IPR2018-01237 (Decisions Granting Institution Entered December 18, 2018). Merck Sharp & Dohme Corp. (“Merck”) filed four IPR petitions, Continue Reading PTAB Tech Center 1600 Round-Up: Week of December 17-21, 2018
During the week of December 10, 2018, the Board issued several Final Written Decisions and institution decisions in Technology Center 1600. The decisions are summarized below: Continue Reading PTAB Tech Center 1600 Round-Up: Week of December 10-14, 2018
Today, the U.S. Patent and Trademark Office announced “revised guidance for subject matter eligibility under 35 U.S.C. § 101,” and “guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions.” The guidance documents are available in the Federal Register and will take effect on Monday, January 7, 2019. Continue Reading USPTO Announces Revised Guidance for Sections 101 and 112
During the week of December 3, 2018, the Board issued one decision in Technology Center 1600 denying institution of inter partes review:
- Mylan Pharm. Inc. v. Bayer Intellectual Prop. GmbH, IPR2018-01143 (Decision Denying Institution of Inter Partes Review, December 3, 2018). Petitioner Mylan challenged the patentability of claims 1-4 of U.S. Patent No. 9,539,218 (the ’218 patent) as obvious over Straub, Kubitza Abstracts, and Forsman. Patent owner Bayer filed a preliminary response to the petition. The Board exercised its discretion to deny the petition under 35 U.S.C. § 325(d) and 314(a). The ’218 patent relates to a method of treating a thromboembolic disorder by a once-daily administration of a “rapid-release tablet” of a direct factor Xa inhibitor, e.g., rivaroxaban. The Board denied the petition under 35 U.S.C. § 325(d) after finding that substantially the same prior art and arguments were previously presented to the Office and the Board in an ex parte appeal. IP2018-01143, Paper 13 at 12. The Board exercised its discretion to deny the petition under 35 U.S.C. § 314(a) after finding that a trial would be an inefficient use of Board resources due to the parallel district court case set for trial on April 1, 2019. Id. at 13. The Board emphasized three reasons for taking this step: 1) the district court proceeding was at an advanced stage; 2) the Board adopted the same claim construction as the district court; and 3) the prior art and expert testimony asserted in the petition overlapped extensively with those presented in the district court. Id.
In a previous post, we reported that in Proppant Express Investments v. Oren Techs., a panel of the PTAB held that 35 U.S.C. § 315(c) allows only joinder of other parties to an IPR, and not same-party joinder of new patentability issues. See IPR2018-00914, Paper 21 at 4-6.
In a recent order, the PTAB’s new Precedential Opinion Panel decided to review the Proppant holding on issue joinder, which appeared to differ from earlier rulings in similar cases. The Panel expressly noted that “Board decisions conflict on the proper interpretation of 35 U.S.C. § 315(c)”:
Compare, e.g., Target Corp. v. Destination Maternity Corp., Case IPR2014-00508 (Paper 28) (Feb. 12, 2015) (concluding that 35 U.S.C. § 315(c) permits a petitioner to be joined to a proceeding in which it is already a party), with SkyHawke Techs., LLC v. L&H Concepts, LLC, Case IPR2014-01485 (Paper 13) (Mar. 20, 2015) (reaching opposite conclusion).
- Under 35 U.S.C. § 315(c) may a petitioner be joined to a proceeding in which it is already a party?
- Does 35 U.S.C. § 315(c) permit joinder of new issues into an existing proceeding?
- Does the existence of a time bar under 35 U.S.C. § 315(b), or any other relevant facts, have any impact on the first two questions?
IPR2018-00914, Paper 24 at 2. The parties and any amicus curiae may submit briefs, of no more than 15 pages, no later than December 28, 2018. Id. at 3. The parties may then file response briefs, of no more than 10 pages, no later than January 14, 2019. Id.