PTAB Ruling Breaks Ranks With Supreme Court and Federal Circuit

Authored by Brian S. Mudge and Tiffany Mahmood

In a recent trial institution decision, the Patent Trial and Appeal Board held that a business method patent for trading securities was patent eligible under 35 U.S.C. § 101. The case, Chicago Mercantile Exchange, Inc. v. 5th Market, Inc., CBM2015-00061 (PTAB July 16, 2015) (paper 9) involved a covered business method (CBM) patent proceeding related to U.S. Patent No. 7,024,387. Chicago Mercantile Exchange (CME), the petitioner, asserted various grounds of unpatentability against patent owner, 5th Market, including patent ineligibility under Section 101. In a holding that appears to be at odds with recent Supreme Court and Federal Circuit precedent, the PTAB ruled that the challenged claims of the ʼ387 were patent eligible because the disclosed structure for a means plus function element was, in effect, a “special purpose computer” that provides a meaningful limitation on the claimed abstract idea.

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Big Pharma Prevails Against Hedge Fund, But It’s No Silver Bullet

Authored by Michelle Carniaux

Yesterday, the PTAB issued its first two decisions addressing inter partes review petitions filed by Kyle Bass and his hedge fund Hayman Capital. In both decisions, the PTAB denied institution of inter partes review of two patents for the treatment of multiple sclerosis owned by Acorda Therapeutics. While Acorda prevailed in these two instances, Big Pharma did not get the silver bullet against Bass et al. it was seeking. The PTAB denied the petitions because it found that the petitions did not present sufficient evidence that certain documents relied upon constituted prior art, but did not address other issues raised by the patent owner that may have been applicable to the other 21 petitions Bass et al. filed against Big Pharma patents.

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USPTO Publishes Proposed Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board

Today, the USPTO published proposed amendments to the rules of practice for trials before the Patent Trial and Appeal Board (PTAB). The USPTO, in concert with the American Intellectual Property Association (AIPLA), will discuss the proposed rules during upcoming road show presentations on August 24, 2015 in Santa Clara; August 25, 2015 in Dallas, Texas, and August 26, 2015 in Alexandria, Virginia. A copy of the Federal Register publication is available here.

Division at the PTAB: Split Panel Denies Joinder “As a Party” to a Proceeding in Which it is Already a Party

Authored by Michelle Carniaux and Michael E.Sander

The PTAB continues to be split on the question of whether the PTAB has the authority to join an otherwise time-barred party to a inter partes review proceeding in which it is already a party. This week, over a dissent, a majority PTAB panel found that the PTAB does not have such authority.See IPR2015-00762, No. 12 Decision Denying Institution (P.T.A.B. Jul. 20, 2015). This same issue was addressed this past February by an expanded panel, with a 4 to 3 split decision coming to the opposite conclusion. See Target Corp. v. Destiny Maternity Corp., Case No., IPR2014-00508, No. 28 (PTAB Feb. 12, 2015).

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Big Pharma Fires Defensive Missile: Complaint Filed for Attempted Extortion

Authored by Michelle Carniaux

Big pharma continues to be on the defensive against IPR attacks by financiers, this time, by filing a civil law suit against a financier/IPR petitioner. Last Friday, Allergan filed a complaint in the Central District of California for attempted extortion, unfair competition and malicious prosecution, against Ferrum Ferro Capital. According to the complaint, Ferrum Ferro filed an “objectively baseless IPR petition for the express purpose of monetizing the petition, including by attempting to extort compensation from Allergan.” Allergan, Inc. et al. v. Ferrum Ferro Capital, LLC et al., 8:15-cv-00992, No. 1 at 2 (C.D.Cal., June 19, 2015).

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