PTAB Nixes Reliance on Technical Report: Not Publication

Authored by Brian Mudge

We have previously written about disputes regarding whether a prior art reference qualifies as a publication in AIA trials.[1] In a recent decision, the Board ruled that a prior art reference did not qualify as a publication under §102(a). The case, Activision Blizzard v Acceleration Bay,[2] rejected petitioner’s attempt to rely on a 1999 technical report allegedly published by University of California / San Diego (“UCSD”).

Key Takeaway:  This case demonstrates that the PTAB will adhere to demanding requirements for petitioners to establish that a reference qualifies as a prior art publication. Petitioners should be prepared to provide detailed evidence showing a prior art reference was publicly accessible before the priority date of a challenged patent. Meanwhile, patent owners should take advantage of opportunities to challenge the public accessibility of references, particularly where the evidence and arguments in a petition are conclusory; such challenges can be effective in a preliminary response and may derail a case before trial is instituted.

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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.

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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.

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Chance at a Second Bite: No Estoppel as to Redundant Ground

Authored by Michelle Carniaux

It has been close to three years since the PTAB first exercised its discretion to decline institution of inter partes review grounds it found to be “redundant” of grounds on which it instituted trial. See CBM2012-00003, No. 7 at 2 (P.T.A.B. Oct. 25, 2012). Since then, the PTAB has routinely been exercising its discretion in this way to take into account “efficient administration of the Office, and the ability of the Office to timely complete proceedings.” See C.F.R. § 42.1(b).

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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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