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.

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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.

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Expanded Panel Flips Joinder Denial

Authored by Michelle Carniaux

The issue of whether the PTAB has the authority to join a subsequent petition to an ongoing inter partes review proceeding in which the petitioner is already a party appears to be settled, at least within the PTAB. We previously wrote about a Decision Denying Institution in Zhongshan Board Ocean Motor Co. et al. v Nidec Motor Corp., IPR2017-00762, in which, over a dissent, a two APJ majority found the PTAB does not have such authority. That majority decision, however, may be an example of APJs breaking ranks with the Patent Office. An expanded APJ panel recently granted Petitioner Zhongshan’s motion for rehearing, concluding that the denial decision was based on an erroneously narrow interpretation of 35 U.S.C. § 315(c). IPR2015-00762, Paper 16 (P.T.A.B. Oct. 5, 2015).

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