Breaking: Federal Circuit Affirms, Reverses, and Vacates in Part PTAB Decision in Microsoft v. Proxyconn

Authored by Michelle Carniaux and Michael E.Sander

This morning, the Federal Circuit issued its second substantive decision on an appeal of a final IPR decision, and its first remanding back to the Board, in Microsoft Corp. v. Proxyconn, Inc. See Microsoft Corp. v. Proxyconn, Inc. 2015-1542, 2015-1543 (Fed. Cir. June 16, 2015); see also IPR2012-00026, IPR2013-00109. In its decision, the Federal Circuit re-affirmed that the broadest reasonable interpretation claim construction standard applies in IPR proceedings. 2015-1542 at 6 (citing In re Cuozzo Speed Techs., LLC, 778 F.3d 1271 (Fed. Cir. 2015)). The Federal Circuit also made clear that it reviews the Board’s conclusions of law de novo and its finding of fact for substantial evidence. Id. at 2 (citation omitted). Accordingly, consistent with Teva Pharmaceuticals U.S.A., Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015), in reviewing the Board’s claim construction determinations, the Court reviews the Board’s claim constructions de novo and its underlying factual determinations involving extrinsic evidence for substantial evidence. Id. at 5-6.

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Wall Street Comes to Alexandria: Two More IPR Petitions Filed by Financiers

Authored by Michelle Carniaux and Michael E. Sander

In what now seems to be part of a trend, two new petitions for inter partes review were recently filed by what appear to be hedge funds and financiers targeting patents owned by large pharmaceutical companies. Last week, Ferrum Ferro Capital, LLC (“Ferrum”) filed a petition for inter partes review against a single claim of a patent owned by Allergan Sales, LLC (“Allergan”). See IPR2015-00858, No. 1 Petition (P.T.A.B. Mar. 9, 2015). The claim at issue relates to the treatment of glaucoma by administering two known active ingredients, timolol and brimonidine, in a single composition. The claim previously survived a lengthy litigation against generic drug manufacturer, Sandoz, Inc. Eventually, the Federal Circuit agreed with the district court that Sandoz had not proven that the claim was invalid as obvious. See Allergan, Inc. v. Sandoz Inc., 11-1619 (Fed. Cir. May. 1, 2013).

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Sacrificing Patent Term to Salvage Past Damages: Using Terminal Disclaimers to Change Claim Construction Standard During Inter Partes Review

Authored by Michelle Carniaux and Michael E. Sander

One of the more significant differences between litigating patent validity in an inter partes review proceedings over a district court, is that a different claim construction standard applies. In an inter partes review proceeding, claims are given the “broadest reasonable construction” (“BRC”). 37 C.F.R. § 42.100(b). The patent office uses the BRC standard because in patent office proceedings, patent owners may amend their claims to read on to existing technology and, the BRC standard “reduce[s] the possibility that, after the patent is granted, the claims may be interpreted as giving broader coverage than is justified.” In re Reuter, 670 F.2d 1015, 1019 (C.C.P.A. 1981).

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Claim Construction for Special Claim Terms in an Inter Partes Review

Authored by Thomas R. Makin, Abhishek Bapna, and Jeong-Ah Joy Lee

In an inter partes review proceeding, the PTO applies the broadest reasonable interpretation (“BRI”) claim construction standard. However, even under the BRI standard, a petitioner should be careful to identify and discuss each and every claim term that is potentially contested and important to the invalidity analysis, particularly if the breadth of the term is being disputed in a parallel litigation.

As an initial matter, no formal rule or published decision requires that the parties present claim constructions of all contested terms. 37 C.F.R. § 42.104(b)(3) merely requires that an IPR petitioner set forth a description of “[h]ow the challenged claim is to be construed.” Consistent with this, one of the comments that accompanied the new IPR rules elaborates that “petitioners are not required to define every claim term, but rather merely provide a statement that the claim terms are presumed to take on their ordinary and customary meaning, and point out any claim term that has a special meaning and the definition in the specification.” 77 Fed. Reg. 48700 (Aug. 14, 2012) (emphasis added). The comment also notes that the final rules “do not preclude providing alternative claim constructions in a petition or in later-authorized filings.” Id. 

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PTAB Issues First Final Written Decision – Invalidates Challenged Claims Under 35 U.S.C. § 101

Authored by Michelle Carniaux and Michael E. Sander

On June 11, 2013, the Patent and Trial Appeal Board (“PTAB”) issued its first ever Final Written Decision in a post grant review proceeding. In an expedited trial, after oral arguments, the PTAB found that the claims of U.S. Pat. No. 6,553,350 challenged in a covered business method patent review are invalid under 35 U.S.C. § 101. See CBM2012-00001, Paper 70 (June 11, 2013).

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