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The Court of Appeals for the Federal Circuit is poised to decide a case which may create new estoppel concerns for AIA petitioners under 35 USC § 315(e)(2).   The appeal resulted from a Hatch-Waxman litigation in BTG v. Amneal, in which the lower court found that the patent claims at issue were invalid over the same prior art that was used in a parallel IPR proceeding, which separately led to a PTAB final written decision of…
On Nov. 8, 2018, the PTAB provided another presentation in its continuing series of Boardside Chats, during which Acting Chief Judge Scott Boalick, Acting Deputy Chief Judge Jackie Bonilla, and Vice Chief Judge Scott Weidenfeller covered the recently updated Trial Practice Guide (see our recent post entitled “Revamped Trial Practice Guide Holds Surprises”), SOP1 relating to assignment of panels, SOP2 relating precedential designation/de-designation, and perhaps most importantly, the newly proposed amendment procedure (covered in…
On Oct. 26, 2018, the USPTO published a proposal for implementing a new 2-phase procedure for patent owners to make amendments during AIA patent challenges.  A key difference under the new process would be that patent owners get a second chance after receiving an initial determination on their proposed amended claims to make further changes.  If implemented, this will represent a significant new option for patent owners who do not have pending continuations at the time of an…
The Patent Trial and Appeal Board (“PTAB”) issued its initial Trial Practice Guide in August 2012, shortly before America Invents Act (“AIA”) post-grant proceedings became available.  That Guide had not been supplemented or updated – other than through substantive decisions of the PTAB  – until the PTAB’s release of a revision on August 10, which takes the form of a supplement that must be read together with the original Guide.  Because the supplemental…
On July 20, 2018, the Federal Circuit held in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals that tribal sovereign immunity does not prevent IPR on a patent assigned to a tribe asserting such immunity.  The court expressly declined to make any decision about state sovereign immunity in this case.  The PTAB has found that state sovereign immunity can prevent IPR, although it may be waived if the patent is enforced in district court by the…
On June 13, 2018, Sen. Hatch (R-Utah) introduced an amendment that would require generic ANDA filers to choose between litigating validity in Hatch-Waxman district court litigation or an AIA challenge (IPR or PGR), and on June 14th, the Senate Judiciary Committee voted 16-5 to bring it to the Senate floor for a vote.  Presently, generic ANDA filers can pursue challenges using both of these routes at the same time, although some courts may stay litigation…
Today in Oil States v. Greene’s Energy, the Supreme Court upheld the constitutionality of IPR proceedings, finding that they are a permissible second review of patents conducted by the administrative agency that issues them and not a violation of the right of a property owner to have adjudication of property rights by an Article III court and also comply with the 7th Amendment.  The decision was issued by a majority of Justices Thomas, Ginsburg, Breyer,…
2017 was a year for the record books at the Patent Trials and Appeal Board (PTAB), which has included newly created standard operating procedures from the PTAB, a landmark en banc ruling from the Court of Appeals for the Federal Circuit impacting amendment practice, and a series of informative decisions from PTAB impacting multiple proceedings against the same patent.…
In a case of first impression, an expanded PTAB panel (including Chief APJ Ruschke) found that a parallel enforcement action by a patent owner waives its sovereign immunity defense against under the 11th Amendment an AIA petition in Ericsson v. Regents of the University of Minnesota.  The expanded panel first affirmed its earlier decisions finding that sovereign immunity will prevent an IPR from proceeding against a patent owner who has not waived the defense.…
In Mylan v. Allergan (IPR2016-00127, Paper No. 73), the PTAB granted a rare request for discovery filed be Petitioner in response to summaries of data presented in a Patent Owner Response used to rebut obviousness.  In particular, the PTAB found that the Garmin factors for analyzing discovery requests weighed in favor of granting Petitioner’s motion.  However, the decision only granted the requested discovery in part, and the PTAB’s reasoning as to what it granted and what…