Supreme Court to Hear Review of AIA Trial

Authored by Brian S. Mudge

In a high profile case that has been watched closely by the patent community, the Supreme Court decided on January 15 to hear its first review of a PTAB trial under the AIA. The case, Cuozzo Speed Techs, LLC v. Lee, involves the first IPR petition filed with the PTAB, and the first appellate decision on an AIA trial by the Federal Circuit. Cuozzo Speed involves two key issues which have been hotly debated since the PTAB began hearing IPRs and other post-grant proceedings under the AIA, and which sparked a lengthy dissent at the Federal Circuit: (1) whether the “broadest reasonable interpretation” (BRI) is the proper standard for construing the claims of the patent under review, and (2) whether the Board’s decision to institute trial is unreviewable on appeal.

Click here to continue reading...

Financier’s Short-and-Petition Strategy: An Update

Authored by Maria Luisa Palmese and Eric Paul Greenwald

We write to update our April 29th post regarding the stock price of pharma companies targeted by Kyle Bass’ Coalition for Affordable Drugs LLC’s (“CFAD”) inter partes review (IPR) petitions. According to Bass, the generation of returns for his hedge fund investors through short selling the stock of his IPR targets is the primary driver of his IPR petition strategy. Now that several of his petitions have been ruled on, let’s see how his “big short” strategy has played out. As of today, half of the fourteen petitions mentioned in our first post have been granted (i.e., the PTAB has instituted an IPR), and the other half have been denied. Of the seven successful petitions, four were against Celgene Corp. and three against Shire PLC. No IPR proceedings have yet been concluded.

Click here to continue reading...

Board Continues Development of Estoppel Caselaw

Authored by Brian S. Mudge

In three recent opinions, the Board has again ruled on the effect of statutory provisions governing estoppel under 35 U.S.C. §315(e)(1) and 35 U.S.C. §325(e)(1) following a final written decision. As shown by these decisions, the Board may, but is not required to, terminate a later proceeding after a final decision that triggers estoppel. These decisions also demonstrate that estoppel may be applied to bar not only prior art challenges, but also challenges under 35 U.S.C. §101 or §112.

Click here to continue reading...

PTAB Crashers: A Look at How They Are Doing in the PTAB

Authored by Michelle Carniaux

A little over six months ago, we identified certain “outsiders” who have filed IPR petitions. These outsiders include financiers, activists, and patent defense firms, none of whom were accused or at risk of being accused of patent infringement. While they account for only around 2% of the IPR petitions filed to date, one group of these outsiders seems to have raised the hackles of Big Pharma. The Coalition for Affordable Drugs entities (Kyle Bass et al.) have filed 33 IPR petitions against Big Pharma patents (allegedly) as part of a stock shorting investment strategy.

Click here to continue reading...

Hedge Funds Making Headway Before The PTAB: Investment-Motivated IPR Challenges Not An Abuse Of Process

Authored by Michelle Carniaux and Dervis Magistre

Hedge fund mogul Kyle Bass has earned a certain amount of notoriety (some would say infamy) for his investment strategy of using IPRs to drive down the value of pharmaceutical companies he is shorting. To date, he and his hedge fund entities have filed thirty-three IPR petitions challenging patents owned by Big Pharma. Critics hoping that the PTAB would declare this strategy an abuse of the IPR process had their hopes dashed by recent rulings that unequivocally confirmed that a profit motive does not taint an otherwise meritorious IPR petition.

Click here to continue reading...