Patent Trial Program Emerges Intact From Supreme Court Row

Authored Brian S. Mudge

In its first decision addressing the post-grant patent trial program recently established by Congress, the Supreme Court in Cuozzo1 has given a resounding victory to the U.S. Patent & Trademark Office. Rejecting a challenge to the PTO’s handling of these new proceedings, the ruling confirms that the Office has broad powers to determine how the cases will be tried and the standards used to govern them. As a result, patent owners will continue to face a difficult path before the PTO in defending challenges to patent validity — one that, to date, has proven to be significantly more hazardous than the courts to patentees.

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Board Issues Mixed Rulings on Patent Eligibility After Enfish

Authored by Brian Mudge and Christopher Gresalfi

In two CBM decisions following the Federal Circuit’s recent Enfish1 opinion, the PTAB has considered patent eligibility of inventions directed to computer databases. The result: one ruling in favor of patent eligibility and one against. These decisions highlight the importance, when adjudicating section 101 challenges, of determining what problem the patent at issue is attempting to solve – and the patent specification may be critical to answering this question.

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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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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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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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