The Patent Trial and Appeal Board (“PTAB”) recently held that sovereign immunity under the Eleventh Amendment is waived in the context of inter partes review (“IPR”) by a state’s filing of a patent litigation in federal court. Ericsson Inc. v. Regents of the University of Minnesota, IPR2017-01186, Paper No. 14. The PTAB first addressed whether…
Although not a Hatch-Waxman case, the District of Delaware’s recent ruling in Parallel Networks Licensing, LLC. v. IBM, could have a significant impact on ANDA-filers strategic approach to IPRs. In this case, the patentee (“Parallel”) filed a complaint in 2013 asserting that IBM infringed three patents. The litigation proceeded in federal district court; however, in…
The Federal Circuit recently reversed and remanded an Examiner’s rejection of a claim that involved an element requiring both structural and functional limitations. See In re Chudik, No. 2016-1487 (Fed. Cir. Jan. 9, 2017). Specifically, the Federal Circuit reversed the Examiner’s rejection because the record failed to establish that a single prior art reference contained…
The PTAB recently rejected Dr. Reddy’s Laboratories’ IPR petitions for Galderma’s patent covering its Oracea® (doxycycline) product for the treatment of rosacea. Galderma’s patent, U.S. Patent No. 8,603,506 (“’506 patent”) is directed to the treatment of rosacea using low dosages of the tetracycline antibiotic doxycycline. Dr. Reddy’s filed three petitions for IPR against the ’506…
On December 11, 2015, the Southern District of Indiana issued an order granting the request of several defendants to stay litigation pending resolution of inter partes review (“IPR”) of two of the patents-in-suit. Eli Lilly & Co. et al. v. Accord Healthcare Inc. et al., Civ. No. 14-cv-00389-SEB-TAB (S.D. Ind. Dec. 11, 2015). Magistrate Judge…
The Federal Circuit held that the Administrative Patent Trial and Appeal Board’s (“PTAB”) decision to institute an Inter Partes Review Proceeding (“IPR”) is not reviewable by the Federal Circuit on appeal. See Achates Reference Publishing, Inc. v. Apple Inc. This decision arose from an appeal by the patentee, Achates, of the PTAB’s decision that several…
In ruling on a “follow-on” inter partes review (IPR), the PTAB held that estoppel under 35 U.S.C. §315(e)(1) does not extent to grounds set forth in a petition that are denied as being redundant to a previous IPR proceeding. Apotex Inc. v. Wyeth LLC, IPR2015-00873, Paper 8 (P.T.A.B. Sept. 16, 2015). The Facts. Apotex filed…
Inter partes review became available on September 16, 2012. Since then, over 3,400 IPR petitions have been filed. The USPTO implemented a first set of changes, or “quick fixes,” in March, and now, the USPTO seeks to improve IPR via a host of additional proposed changes. But will they result in any real change? Only…
In the first Federal Circuit ruling of an appeal from an inter partes review (“IPR”) decision, the Court held that the Patent Trial and Appeal Board (“the PTAB”) correctly applied the broadest reasonable interpretation standard to construct patent claims, held that it lacked jurisdiction to review the PTAB’s decision to institute an IPR, affirmed the…
The complex interactions between an Inter Partes Review (“IPR”) before the patent office and a patent infringement action in Federal District Court require a patent challenger to think strategically about the approach they take to challenge a patent. Judge James Donato’s recent holding in IpLearn-Focus, LLC v. Microsoft Corp. highlighted the effect that District Court…