In a recent article, Real Parties In Interest Guidance On Who Is An RPI-And Who Is Not-In Post Grant Proceedings, linked here, Emily Greb and Maria Stubbing offer practical guidance and examine caselaw to clear some of the confusion and frustration practitioners encounter when real parties-in-interest in post-grant review proceedings before the U.S.
Maria A. Stubbings
Federal Circuit Applies § 325(d) to Reexamination Requests
Section 325(d) gives the Patent Trial and Appeal Board (“PTAB”) discretion to deny a post-grant petition when “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Both the PTAB and the Federal Circuit have opined on the discretionary denial provisions in 35 U.S.C. § 325(d) in the context of serial inter partes review (“IPR”) petitions. The Federal Circuit has now held that § 325(d) applies to requests for ex parte reexamination. This decision did not involve biotechnological subject matter, but the holdings are nevertheless applicable. …
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Federal Circuit emphasizes high bar for enablement of functional claims
In two recent decisions in Amgen Inc. v. Sanofi, Aventisub LLC, the Federal Circuit has made clear that broad functional patent claims must be fully enabled and underscored the high bar for enablement of broad biological compound claims including functional limitations. Amgen v. Sanofi, Aventisub LLC, 987 F.3d 1080 (Fed. Cir. 2021). On June 21, the Federal Circuit denied Amgen’s petition for rehearing en banc, and the original panel authored an opinion responding to Amgen and the amicis’ concerns that the court’s decision created a new enablement test or eviscerated genus claims. Amgen Inc. v. Sanofi, Aventisub LLC, No. 20-1074, 2021 WL 2525530 (Fed. Cir. June 21, 2021). Patentees claiming biological materials should be aware that “[e]nablement is required, even for generic claims to biological materials[,]” and “as with genus claims to chemical compounds, if they encompass more subject matter than just a few species, they need to be enabled accordingly.” Id. at *1. Further, “[b]iological compositions not actually prepared need to be described constructively, if required to enable the full scope of the claims, with procedures and names of resultant compositions, as with chemical compositions.” Id.…
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One More Tool to Avoid Fintiv IPR Denial: File A Stipulation in District Court Relinquishing Potentially Duplicative Arguments
We have previously written about the Patent Trial and Appeal Board’s (“PTAB”) precedential decision in Apple Inc. v. Fintiv, Inc., which set forth six factors the PTAB will consider when assessing whether to discretionarily deny an IPR petition in light of co-pending district court litigation. Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020). The PTAB has been applying the Fintiv factors in subsequent IPRs, many of which involve a stayed district court litigation. The PTAB has now designated as precedential a decision instituting IPR in Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (Dec. 1, 2020). In this IPR, although the co-pending district court case was not stayed, Sotera Wireless (“Sotera”) filed a stipulation relinquishing all potentially duplicative arguments. The PTAB allowed the IPR to proceed, noting that the stipulation avoided duplication and prevented conflicting results, chief components of the Fintiv factors. More detail on this decision is below.
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The Threshold Showing Of Prior Art Status: PTAB’s New Precedential and Informative Decisions
On April 7, 2020, the Patent Trial and Appeal Board (“PTAB”) designated one decision as precedential and four decisions as informative, all relating to the topic of prior-art status. Overall, the precedential decision clarifies the different standards for establishing a reference as a printed publication in IPRs versus patent examination, and the informative decisions provide examples of factual scenarios meeting and failing to meet the “threshold showing” for printed-publication status at the IPR institution stage. A summary of each decision is below.
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The Continued Prior Art Accessibility Saga: Beware of “Bare Attorney Argument”
Building on one of the running topics on our blog—what a Petitioner must do to demonstrate public accessibility of a printed publication (see, for example, posts from Dec. 27, 2019; Dec. 2, 2019; Nov. 13, 2018; and Sept. 25, 2018)—the Patent Trial and Appeal Board (“PTAB”) has once again addressed the issue and held that bare attorney argument cannot overcome objective evidence of a reference’s accessibility. A summary of the institution decision in this case was published on our blog on March 5, 2019. …
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Supreme Court Prevents the Government from Challenging Patents in PTAB Proceedings
On June 10, 2019, the Supreme Court held that a federal agency is not a “person” who can file a petition for review of a patent under one of the three new proceedings created by the America Invents Act (“AIA”). Return Mail, Inc. v. United States Postal Service, 587 U.S. ____, 2019 WL 2412904, at *3 (U.S. June 10, 2019) (“Return Mail“). Specifically, the Court held that federal agencies cannot file a petition for inter partes, post-grant, or covered business method review with the Patent Trial and Appeal Board (“PTAB”) (collectively, “PTAB proceedings”). Id.
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Helsinn Update: The Supreme Court Preserves the Substance of the Pre-AIA On-Sale Bar
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 …
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PTAB Holds that 35 U.S.C. § 315(c) Prevents Same-Party Joinder of Issues to An Instituted IPR
IPR petitioners Proppant Express Investments, LLC and Proppant Express Solutions, LLC (collectively, “PropX”) have a pending instituted inter partes review (IPR) on certain claims of U.S. Patent No. 9,511,929 (“the ’929 patent”). Unfortunately for PropX, it mistakenly grouped its arguments against one of the dependent claims—claim 4—into the wrong ground, which led the Patent Trial and Appeal Board (the “Board”) to deny institution of IPR of that claim, due to inadequate support. IPR2017-02103, Paper 19 at 32, 34. After institution, PropX sought to amend the petition to move claim 4 into the proper ground. The Board denied PropX’s request because PropX was not diligent: despite Patent Owner’s (“Oren”) Preliminary Response pointing out PropX’s mistake, PropX failed to notice the mistake until after institution. IPR2017-02103, Paper 22.
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Cautionary Tale to IPR Petitioners: Avoid Time Bar Pitfalls
Two recent decisions from the PTAB and Federal Circuit signal inter partes review (“IPR”) petitioners to be cautious of approaching too closely the one-year time bar set forth in 35 U.S.C. § 315(b). First, on August 14, 2018, the PTAB denied institution of a petition that had been filed more than one year after a related district court complaint had been mailed, but within a year from its receipt. Vizio, Inc. v. ATI Techs. ULC, IPR2018-00560, Paper 7 (PTAB Aug. 14, 2018). Then, on August 16, 2018, the Federal Circuit held that a complaint could trigger the one-year time bar even if that complaint had been dismissed without prejudice. Click-to-Call Techs., LP v. Ingenio, Inc., No. 15–1242, 2018 WL 3893119, at *4 (Fed. Cir. Aug. 16, 2018). These decisions reiterate the need for IPR petitioners served with a complaint to approach the one-year bar cautiously when deciding target IPR filing dates.
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