The Patent Trial and Appeal Board (PTAB) denied Pfizer, Inc.’s (“Petitioner”) petition to institute an inter partes review (IPR) of the sole claim of Biogen Inc.’s (“Patent Owner”) U.S. Patent 8,329,172 (the “’172 Patent”). That claim covers a method of treating B-cell lymphoma by using a certain chemotherapy followed by maintenance therapy with the drug Rituxan. The petition relied on three potential prior art references, including a document identified as IDEC Pharmaceuticals and Genentech, Inc.’s 1997 product label for Rituxan. Patent Owner argued that the record contained no evidence that the document identified as the product label was publicly available before the patent’s priority date.
On November 1, 2017, District of Delaware Judge William Bryson granted defendants D&M Holdings Inc., D&M Holdings U.S. Inc. and Denon Electronics (USA), LLC’s (collectively, “D&M”) motion to strike part of the expert opinion of plaintiff Sonos, Inc.’s damages expert.
On October 23, 2017, a Patent Trial and Appeal Board (PTAB) panel granted Petitioner’s Motion to Submit Supplemental Information (“the Motion”) on the publication date of an asserted reference. At the time the Petition was filed, the effective filing date of the challenged claims was November 6, 1997. After the Institution Decision, however, the Patent Office issued a Certificate of Correction for a related patent that “may result in according the challenged claims an effective filing date of January 29, 1997.” Accordingly, Petitioner filed the Motion to submit information that would “further confirm the prior art status” of the reference. Critical to the PTAB’s decision was that (1) the original Petition—despite focusing on the November 6 date—contended that the reference was “published by at least January 17, 1997,” and (2) the Patent Office’s Certificate of Correction was a “post-filing change of circumstances.”
In a recent decision, Judge Schroeder of the Eastern District of Texas rejected the argument that decisions of the United State Patent and Trade Office (USPTO) invalidating patents held infringed by a jury means that a defendant cannot be held liable for willful infringement where appellate review of the invalidity decisions is still ongoing.
On October 6, 2017, the Patent Trial and Appeal Board (the “Board”) granted institution of inter partes review under 35 U.S.C. § 103(a) of claims directed to an online game. Notably, institution was granted despite the Board reserving determination on the patent owner’s argument that the petition should be denied under 35 U.S.C. § 315(b) as time-barred.
A Patent Trial and Appeal Board (PTAB) panel declined to institute an inter partes review (IPR) of a claim directed to a method for treating low grade B-cell non-Hodgkin’s lymphoma. The challenged method required patients to be treated with cyclophosphamide, vincristine, and prednisone (CVP) chemotherapy, followed by four once-weekly doses of 375 mg/m2rituximab, an anti-CD20 antibody, every six months for two years.
On September 22, 2017, the United States Patent Trial and Appeal Board (PTAB) issued a final written decision regarding claims directed to a switching regulator comprising a power switch and a control circuit. The PTAB found all challenged claims obvious under 35 U.S.C. § 103 based on the combination of two prior art references. In so doing, the PTAB ruled on motions to exclude filed by both petitioner and patent owner. While the parties’ motions were denied or dismissed as moot for several exhibits, the PTAB excluded portions of declaration testimony as hearsay under Rule 402 of the Federal Rules of Evidence.
In cases where petitioners want a “second bite at the IPR apple,” the Patent Trial and Appeal Board (PTAB) has issued an informative decision stating that it wants an explanation for the delay between the original and follow-on petitions. In General Plastic v. Canon, where the petitioner submitted follow-on petitions, but did not include an explanation about why the prior art could not have been found earlier and why the follow-on petitions could not have been submitted sooner, the PTAB denied institution and a request for rehearing for the follow-on petitions.