Knobbe/Martens: Intellectual Property Law

Kerry S. Taylor, Ph.D.

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The Federal Circuit Finds Tribal Sovereign Immunity does not Apply in IPR

July 24, 2018 Peter Law and Kerry S. Taylor, Ph.D.

On July 20, 2018, the Federal Circuit held that tribal sovereign immunity is not available as a defense in IPR.


USPTO Proposes Phillips-Type Claim Construction For Post Grant Proceedings at the PTAB

The USPTO published a Notice of Proposed Rulemaking on May 9, 2018 seeking to change the claim construction standard for PTAB trials from the current broadest reasonable interpretation (BRI) to the claim construction standard applied in federal courts and ITC proceedings that follow Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).  The proposed rule also requires the PTAB to consider prior claim construction determinations that are timely made of record from a civil action or ITC proceeding.

USPTO Issues Guidance on Impact of SAS on AIA Trial Proceedings

On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings.


Supreme Court Issues Two Important Decisions Affecting Inter Partes Review Patent Challenges

April 25, 2018

The Supreme Court has issued two important decisions affecting Inter Partes Review (“IPR”) and other post-grant patent challenges conducted by the Patent Trial and Appeal Board (“PTAB”).

PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office

On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution.  Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8); and Kayak Software Corp. v. IBM Corp., CBM2016-00075 (PTAB Dec. 15, 2016) (Paper 16).  These Informative Decisions are based on the AIA statutory provision of 35 U.S.C. § 325(d), which permits the PTAB to deny institution of petitions that present grounds of unpatentability based on prior art that had been previously presented to the Office.


Despite Change in Motion to Amend Practice by Aqua Products, PTAB Orders Scope of Remand to be Limited to Federal Circuit’s Decision

In an IPR on remand from the Federal Circuit on appeal of a motion to amend, the PTAB considered the scope of briefings of the parties in view of the Federal Circuit’s recent en banc decision Aqua Products v. Matal. The PTAB ordered that the remand be limited to the Federal Circuit’s remand instructions on reevaluating the original PTAB decision, without reconsidering all issues overturned in Aqua Products.


The Federal Circuit Stays IPR Pending Review of the PTAB’s Denial of St. Regis Mohawk Tribe’s Sovereign Immunity

March 29, 2018 Peter Law and Kerry S. Taylor, Ph.D.

The PTAB ruled that the Saint Regis Mohawk Tribe could not assert sovereign immunity in IPRs of patents that Allergan had assigned to the Tribe relating to Restasis®.  See The Saint Regis Mohawk Tribe is not entitled to Sovereign Immunity at the PTAB. Following the PTAB’s dismissal of the Tribe’s sovereign immunity defense, the Tribe filed a notice of appeal and request to the PTAB to stay the IPR proceedings.  IPR2016-01127, Paper 134 (PTAB March 8, 2018).  The Tribe argued that its appeal divested the PTAB of jurisdiction.  Id. at 3-7.  The PTAB denied the Tribe’s motion to stay and stated that the Tribe’s interlocutory appeal does not divest the PTAB of jurisdiction, because the IPR proceedings can proceed against Allergan alone.  IPR2016-01127, Paper 137 at 4 (PTAB March 22, 2018).  The Tribe then filed a motion with the Federal Circuit to stay the IPR proceedings.


University of Minnesota’s and Toyota’s Claims Held Unpatentable after Minnesota is Dismissed from IPR

March 19, 2018 Peter Law and Kerry S. Taylor, Ph.D.

The University of Minnesota (UMinn) and Toyota Motor Corp. (Toyota) co-own U.S. Patent 8,394,618 (the ’618 patent).  After Reactive Surfaces Ltd. filed a petition for IPR of the ’618 patent, UMinn and Toyota filed a motion to dismiss the petition based on UMinn’s sovereign immunity.  Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2016-01914, Paper 23 (PTAB March 3, 2017).  The Board granted the motion in part, dismissing UMinn from the proceedings, but continuing the IPR with Toyota.  Paper 36 (PTAB July 13, 2017).  [Link to Blog post from  July 20, 2017]  On March 1, 2018, the Board entered a Final Written Decision holding all instituted claims were unpatentable.  Paper 64 at 43 (PTAB March 1, 2018). 


PTAB holds Genentech’s antibody purification method claims unpatentable as anticipated and obvious

The PTAB held that all of Genentech’s challenged antibody purification claims were unpatentable as being anticipated, obvious, or both, in an IPR filed by Hospira and Pfizer, Hospira, Inc., v. Genentech, Inc., IPR2016-01837, Paper 40 (P.T.A.B. March 6, 2018).


The Saint Regis Mohawk Tribe is not entitled to Sovereign Immunity at the PTAB

March 7, 2018 Peter Law and Kerry S. Taylor, Ph.D.

The PTAB dismissed the Saint Regis Mohawk Tribe’s attempt to avoid IPR of patents covering Restasis®, which Allergan transferred to the Tribe in a highly publicized patent deal. [LINK TO PRIOR BLOG POST FROM 9/12/2017]  After Allergan assigned the Restasis® patents to the Tribe, the Tribe filed a motion to dismiss the then-pending IPRs.  Mylan Pharmaceuticals, Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127, IPR2016-01128, IPR2016-01129, IPR2016-01130, IPR2016-01131, IPR2016-01132, at Paper 78 (PTAB Sept. 22, 2017).


Toyota Requests Adverse Judgment After University of Minnesota is Dismissed from IPR on the Basis of Sovereign Immunity

February 13, 2018 Peter Law and Kerry S. Taylor, Ph.D.

A closely watched case on sovereign immunity, Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2017-00572, has now been terminated by the patent owner’s request for adverse judgment.


Federal Circuit's Treatment of Alleged APA Violations at the PTAB

February 12, 2018 Kerry S. Taylor, Ph.D. and Scott R. Seeley

Attorneys Kerry S. Taylor, Ph.D. and Scott R. Seeley authored "Federal Circuit's Treatment of Alleged APA Violations at the PTAB" which was published in the January 31, 2018 edition of Westlaw Journal Intellectual Property.

Read the full article below.

The continuing CRISPR patent battle: the Broad Institute loses a key European patent

January 23, 2018

In an EPO opposition proceeding challenging several of Broad’s European patents, the EPO’s Opposition Division revoked Broad’s foundational CRISPR patent, EP2771468. This EPO decision will likely lead to the revocation of several more – but not all – of Broad’s European patents.

PTAB Finds that Suing in Federal Court Waives Sovereign Immunity

January 15, 2018 Peter Law and Kerry S. Taylor, Ph.D.

On December 19, 2017, a seven-judge expanded PTAB panel ruled that the University of Minnesota (UM) waived its Eleventh Amendment immunity defense when it filed a patent infringement action in federal district court.  Eleventh Amendment immunity had been the focus of several previous PTAB decisions, but these previous decisions did not involve a sovereign who had filed an infringement action in federal court before an IPR petition was filed.  

PTAB Issues Order Proposing Claim Amendments to Patent Owner

The PTAB issued and order stating that it would grant Patent Owner’s motion to amend claims upon Patent Owner accepting further claim amendments suggested by the judges in Taiwan Semiconductor Manufacturing Co. Ltd. v. Godo Kaisha IP Bridge 1, IPR2016-01249, Paper 46 (P.T.A.B. Dec. 12, 2017).

USPTO to increase IPR fees by 33% and PGR fees by 27% in 2018

The USPTO announced that the official fees for IPR and PGR will increase significantly starting on January 16, 2018.  See 82 Fed. Reg. 52780, 52807 (Nov. 14, 2017).  

Amicus Curiae Briefs Authorized on Tribal Sovereign Immunity in IPRs of Restasis® Patents

November 7, 2017 Peter Law and Kerry S. Taylor, Ph.D.

The Saint Regis Mohawk Tribe’s recent motion to terminate pending IPRs on patents purported to cover Allergan’s Restasis® product has spurred two parties to seek authorization from the PTAB to file amicus briefs.  

The PTAB Reverses Original Decision After the Federal Circuit Reverses Key Findings and Limits Issues for Review

On October 17, 2017, the PTAB issued a final written decision in an IPR holding all claims unpatentable after the Federal Circuit vacated and remanded the PTAB’s previous final written decision. The PTAB reversed their original patentability determination after the Federal Circuit decided all but one of the questions at issue on appeal. EMC Corp. v. Clouding Corp., IPR2014-01309, Paper 36 (P.T.A.B. Oct. 17, 2017).


PTAB Designates as “Informative” Three Discretionary Denials of IPR Institution Decisions

On October 24, 2017, the PTAB designated as “informative” the following three decisions that discretionarily denied institution of IPR petitions under 35 U.S.C. § 325(d).  Section 325(d) provides that “the Director may take into account whether, and reject the petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.”  The “informative” designation indicates that the decisions are not binding on other panels, but provide the PTAB’s general consensus and guidance regarding discretionary denials under § 325(d).

Nonprofit Group I-MAK Files IPR Petition Seeking to Invalidate Hepatitis C Drug Patent

In an effort to lay the groundwork for generic entry and reduced drug prices, the non-profit group Initiative for Medicines, Access and Knowledge, Inc. (I-MAK), with the support of the Laura and John Arnold foundation, has petitioned the PTAB seeking Inter Partes Review of Gilead’s U.S. Patent Nos. 7,429,572 & 7,964,580, which purport to encompass sofosbuvir, one of the active components of anti-Hepatitis C drugs Sovaldi®, Harvoni®, and Epclusa®.  


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