Monthly Archives: October 2015

The IPR Hearing Really Does Matter

PTAB Hearing RoomWhen I was an Adminsitrative Patent Judge, I expected to go into an IPR trial hearing with a pretty good idea of who was going to win.  I was surpised to find that rarely to be the case.  I was far more open to persuasion at that point than I had expected to be.

Some commentators have likened PTAB trial hearings to oral argument at the Federal Circuit.  … More

The Death Valley for Petitioners in IPR

view from death valley at dante's point

A Petitioner faces great peril if it gets an IPR instituted but then doesn’t prevail in the final written decision. That is, the Petitioner puts in enough to get a trial but not enough to win it. A Petitioner thus caught finds itself bound even more inextricably to the patent it sought to free itself from.

How can this happen? After all, if there was enough in the Petition to persuade the PTAB that a trial is justified,… More

Petitioner’s Biggest Problem: Challenge Depth Mismatch

Taking out the competition, business concept.

With only sixty pages (Editor’s update: 14,000 words) in which to present a thorough treatment of every issue, the Petitioner must balance depth of analysis against the number of challenges.  The fear of estoppel often drives Petitioners to present many challenges with a shallow analysis that is supported by a perfunctory expert declaration rehashing the Petition.  The Board often institutes on only a handful of such challenges,… More

IPR filing receipts can take a month to issue

In the early days of AIA trials, the PTAB was able to issue filing notices less than a week after petition filing.  But paralegal resources now are stretched due to the need to process a full slate of institution decisions, interlocutory decisions, and final decisions on an IPR docket four-to-five times larger than projected.  As a result, lately it is taking almost a month to issue those notices. … More

Hedge Funds Are People Too

iStock_000011987636_SmallThe Mangrove Partners Master Fund Ltd. is the latest hedge fund to get into the PTAB/short-sell stock game, successfully petitioning the Board to institute IPRs on two network security patents (IPR2015-01046 and IPR2015-01047). Interestingly, the two patents owned by VirnetX, a patent licensing company, were the subject of prior unsuccessful IPR petitions by other companies as well as district court litigation. Similar to the Patent Owners in the Kyle Bass petitions,… More

The Petitioner’s case doesn’t just start with the Petition—it ends with it.

Lawyers generally do not like to lay out their entire case at the outset of litigation.  They like to hold back some arguments to see how their adversary responds.  Yet a PTAB trial proceeding is one place where doing anything less than a full reveal could prove fatal.

The Petition is the one and only shot the Petitioner has at making the case for unpatentability. … More

Single-Judge Institution Decisions: Enough Quality Control?

goldfish showing discrimination success individuality leadership or motivation conceptThe Board was kicking around the idea of single-judge institution decisions for most of my tenure there.  But now they’ve formally requested comments on a proposed pilot program for single-judge institution decisions (deadline recently extended to October 26, 2015).  There’s ample precedent for this from the interference practice, where single-judge declarations of interference have been the norm for decades.

The rationale for introducing single-judge orders is simple: conserving judicial resources.  … More

PTAB: No “Abuse of Process” by Bass in filing IPR Petition against Celgene

Red seal and imprint "SANCTIONS" on white surface

In its recent decision, an expanded panel of the PTAB denied Patent Owner Celgene’s motion for sanctions against Petitioner “Coalition for Affordable Drugs VI, LLC,” and thereby refused to provide Patent Owners with a basis to halt the IPR challenges currently brought by hedge fund entities against the pharmaceutical industry.  Celgene had sought dismissal of several petitions.

Kyle Bass, the head of Hayman Capital Management LP,… More

CBM Instituted For Healthcare-related Patent

Medical record data just transfer to show on tablet.In Symphony Health Solutions Corp. v. IMS Health Incorporated, CBM2015-00085, the Board instituted Covered Business Method patent review (CBM) for an IMS patent having claims in the healthcare field. The IMS patent “relates to a system and method for the gathering and analysis of health-care related data” and “techniques for de-identifying the individuals from such pharmaceutical data, in order to maintain privacy.”

In its Preliminary Response,… More

When Joint Settlement Agreements Do Not Settle

The Patent Trial and Appeal Board’s Discretion To Maintain A Proceeding After Petitioner Termination

Under 37 CFR 42.74, parties to a trial before the Patent Trial and Appeal Board (PTAB) may mutually agree to terminate the proceeding.  However, the PTAB is not a party to the settlement and may independently determine any question of jurisdiction, patentability, or Patent Office practice irrespective of the parties’ agreement to terminate.… More

A (Former) Judge’s Perspectives

Foley Hoag‘s PTAB Practice Group is delighted to launch this blog dedicated to all aspects of practice before the Patent Trial and Appeal Board.  In this blog, we plan to offer commentary to augment the reader’s general understanding of proceedings before the PTAB, and to provide insight into important issues in PTAB practice.  Although we expect that most of our comments will arise in the context of inter partes review,… More