By Scott A. McKeown
| May 26, 2016

AIPLA/USPTO Program to Focus on PTAB Trials & Ex Parte Appeals


On Wednesday June 15th the AIPLA & Patent Trial & Appeal Board (PTAB) will host their second annual Bench and Bar Conference.  A highlight of the program is the Tri-Judge Panel with Judge Jay Plager from the Federal Circuit, Judge Gregory Sleet from the District of Delaware, and former PTAB Chief Judge Nate Kelley.  For the ex parte appeals topic, an actual ex parte appeal argument will be heard live.  

The event will be webcast for those unable to attend in person (USPTO, Madison Auditorium). (register here) The program will be held from 1-5PM with a reception thereafter.  The current schedule is provided below.

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By Scott A. McKeown
| May 18, 2016

A Guest Post by Tia Fenton & Jeff McIntyre


As discussed previously, biosimilar applicants can gain significant strategic advantage by availing themselves of Patent Trial & Appeal Board (PTAB) patent challenge mechanisms. This week, the Board agreed to consider the patentability dispute over AbbVie’s HUMIRA® drug (IPR2016-00172) (here).

In the ‘172 IPR, Coherus challenged the patentability of AbbVie’s U.S. Patent No. 8,889,135 (“the ‘135 patent).  The ‘135 patent is one of a series of patents covering various aspects of AbbVie’s HUMIRA® drug.  HUMIRA®, one of the top selling drugs in the world, is used to treat numerous autoimmune diseases, including rheumatoid arthritis. Coherus announced its plans to file an application to market a biosimilar version of HUMIRA® in the second half of 2016 and filing IPRs against HUMIRA® patents is part of Coherus’s strategy for entering the market.
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By Scott A. McKeown
| May 16, 2016

Impact of Concluded PTAB Proceedings on Litigation


Patent challenge proceedings of the USPTO's Patent Trial & Appeal Board (PTAB) are designed to provide a low cost, expedited option to district court litigation. Of course, if a patent challenger is unsuccessful at the PTAB, the district court is left to make the ultimate resolution on validity.  Now several years into the PTAB's existence, closed AIA trial records are being leveraged by the courts to resolve disputed issues of fact.  

Especially as to matters of claim scope, the PTAB's expansion of the intrinsic record is providing courts with a short cut in assessing otherwise thorny factual determinations. Accused infringers are beginning to favorably leverage this record in related litigation—such as in a motion for summary judgment.   

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By Scott A. McKeown
| May 11, 2016

Former Medtronic Patent Counsel Tapped for PTAB Lead


Today, the USPTO has announced the appointment of David P. Ruschke as new Chief Judge for the Patent Trial and Appeal Board (PTAB). Ruschke will begin his new role at USPTO headquarters in Alexandria, VA, on May 23, 2016.  The text of the press release is found below.
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By Scott A. McKeown
| May 11, 2016

PTAB Moves to Establish More Precedential Decisions

Yesterday, the Patent Trial & Appeal Board (PTAB) announced the designation of five, additional precedential decisions.

Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013) - This order discusses the factors considered in evaluating motions for additional discovery in IPR proceedings. Previously designated as informative, this decision has been treated as de facto precedent for quite some time.

Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013) – This order discusses the factors considered in evaluating motions for additional discovery in CBM proceedings. (Garmin for CBMs)

Oracle Corp. v. Click-to-Call Techs, LP, IPR2013-00312, Paper 26 (October 30, 2013) (precedential only as to Section III.A.) - This decision pertains to interpretation of “served with a complaint” for purposes of triggering the one-year time bar set forth in 35 U.S.C. § 315(b).  More specifically, this decision stands for the proposition that a dismissal of a prior law suit "without prejudice" prevents that suit from triggering the time bar of 315(b).  This has also been de facto precedent at the PTAB.
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