Federal Circuit Rules on Burden to Establish Patentability of Amended Claims

Authored by Brian S. Mudge and Dragan Plavsic

In a recent decision, the Federal Circuit confirmed that the burden of proof shifts from petitioner to patent owner to establish patentability of substitute claims proposed in AIA post-grant proceedings. The case, Nike, Inc. v. Adidas AG, No. 2014-1719 (Feb. 11, 2016), involved an appeal of a PTAB decision denying Nike’s motion to amend claims in an IPR. In reviewing the burden of proof for claim amendments, the Federal Circuit agreed that the burden is on the patent owner to demonstrate that the substitute claims are patentable not only over the prior art already of record but also over prior art known to the patent owner. Moreover, the Federal Circuit ruled that the patent owner may satisfy its burden as to prior art not of record by meeting its duty of candor and good faith in addressing additional prior art known to the patent owner, if any.

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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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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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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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Opening the Door: Broad Statement Leads to Compelled Discovery

Authored by Michelle Carniaux and Michael E. Sander

In litigation, parties often use broad statements to summarize their themes or attack an opposing party’s position, but in an inter partes review trial, broad statements regarding the state of the art prior to the invention can inadvertently open the door to discovery. In a recent decision, the Board used a patent owner’s broad statement as a reason to compel discovery of documents allegedly inconsistent with that statement. See IPR2014-00727, No. 37 Decision (April 14, 2015).

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