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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PTAB Rules on Scope of Estoppel Following Final Decision

Authored by Brian S. Mudge

In its first ruling on the scope of estoppel under 35 U.S.C. §315(e)(1) following a final IPR decision, the Board has denied institution of trial in a second IPR involving the same patent. The case, Dell, Inc. v. Electronics & Telecommunications Research Institute, IPR2015-00549 (PTAB March 26, 2015) (paper 10), involved an IPR brought in connection with U.S. patent no. 6,978,346. As a result of a final decision issued in a previously-instituted IPR involving the same patent, the PTAB determined that challenges to claims 1-3 and 5-8 of the ’346 patent were precluded under the estoppel provisions governing IPRs. In its ruling, the Board explained that the legislative history of the estoppel provisions suggests a broad interpretation of the scope of estoppel.

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PTAB Crashers: A Who’s Who of Non-Practicing IPR Petitioners

Authored by Michelle Carniaux and Michael E. Sander

Although IPR proceedings were intended to provide those accused (or at risk of being accused) of patent infringement a faster and less costly proceeding to challenge the validity of a patent, it has also drawn the attention of outsiders. There are several types of “PTAB crashers,” each having its own motivation for challenging the validity of one or more patents. What they have in common is that each has filed one or more IPR petitions despite having no risk of being charged with infringement of the subject patent(s). To date, PTAB crashers account for 47 IPR petitions.

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IPR Estoppels in District Court: Motion to Strike Smoked by Real-World Product

Authored by Michael S.Turner

As accused infringers rush to challenge patents in trials before the Patent Trial and Appeal Board, they must consider the estoppels of 35 U.S.C. § 315(e). The estoppel statute may prevent petitioners from later raising any ground of unpatentability that was raised, or could have been raised, during the PTAB trial. If claims survive, the accused infringer may be left without prior art patents or printed publications to present in district court, and should consider other types of prior art: prior art use or sale in the United States.

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UPDATE – Back From the Dead: Misidentification of RPI Does Not Necessarily Lead to End of IPR

Authored by Michelle Carniaux and Michael E. Sander

In a previous blog post, we discussed challenges to IPR petitions filed by Valeo based on the failure to list all real parties in interest in their petitions:

In the petitions, the petitioners identified a number of real parties in interest, including “Valeo, Inc.” However, more than seven months prior to the petitions were filed, “Valeo, Inc.” ceased to exist as a result of corporate restructuring (a merger and name change). Valeo Inc.’s successor in interest, “Valeo North America, Inc.” was not named as a real party in interest in the petitions.

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