New Presentation of Same IPR Art Thwarted by Estoppel

Post SAS, there are fewer exceptions to IPR estoppel. Indeed, the absence of partial institutions has led to many courts finding the “reasonably could have raised” aspect of IPR estoppel to be broader than just the art of the ultimate Patent Trial & Appeal Board (PTAB) trial. As such, unsuccessful petitioners are now exploring alternative theories.

In The California Institute of Technology v. Broadcom Limited, et al., (here) the Central District of California found that IPR estoppel applies where the same IPR reference is later raised under the “known or used” prong of pre-AIA 35 U.S.C. § 102(a), rather than as a “patent or printed publication” as in the IPR. Continue Reading IPR Art Simultaneously Qualifying as Known or Used Subject to Estoppel

PTAB Success a Relevant Consideration Under 35 U.S.C. § 285

After Octane Fitness, district courts “may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances,” looking at substantive strength of a party’s litigating position or the unreasonable manner in which the case was litigated.

As one recent decision makes clear, not only can a successful PTAB trial aid a litigation fee dispute, but the PTAB fees themselves may be recoverable. Continue Reading Leveraging Your PTAB Record to Secure Attorney Fees in District Court

Seeking More Granularity on Patent Pools?

Patent pools and groupings of standard essential patents (SEPs) facilitate one-stop shopping of patent licensees. When operated fairly, these arrangements can provide meaningful efficiencies to licensors and licensees alike. On the other hand, there is also ample room for abuse given the brute strength of such large portfolios.

While the Patent Trial & Appeal Board (PTAB) can be an appealing solution to combat improvidently granted patents, it is not a realistic option for an implementer facing a large pool that might include patents of questionable merit.  Thus, when this “big stick” leverage is abused, unreasonable license valuations/demands can go unchecked. When such undesirable economic practices are multiplied across pools, “royalty stacking” becomes especially problematic for implementers, and ultimately, consumers. Continue Reading Dealing with SEP Demands & Royalty Stacking

Assignor Estoppel Precluded by AIA Statutes…But What of Other Equitable Defenses?

The doctrine of assignor estoppel bars the assignor of a patent from challenging the validity of the patent after it is assigned. In considering this defense to an AIA trial proceeding, the Patent Trial & Appeal Board (PTAB) had consistently held that this common-law doctrine is subject to abrogation by statute, and that the AIA statutes do exactly that. The Federal Circuit recently agreed.

However, the Board has considered and applied other equitable defenses. For example, the Board has applied waiver (prior to the Federal Circuit’s determination that tribal immunity did not apply to the PTAB). Thus, equitable defenses that do not conflict with the AIA statutes may be leveraged.

One equitable defense that could become more prominent going forward —given the alignment of claim construction standards between the PTAB and courts— is judicial estoppel.

Continue Reading Equitable Defenses at the PTAB

ITC Staff Attorney Not Bound by Estoppel

Plaintiffs are painfully aware of the Patent Trial & Appeal Board (PTAB) and its potential to derail a patent litigation. Indeed, post-SAS patent owners facing motions to stay pending PTAB review are left with even less to argue. Even where a stay is avoided, the speed of the PTAB can undermine traditional litigation pressure points that traditionally drove parties to settlement (e.g., Markman). As such, plaintiffs are increasingly viewing the International Trade Commission (ITC) as the strongest foil to a PTAB attack.

The ITC, having its own mandate for speed does not stay pending PTAB review.  Likewise, an ITC Exclusion Order can be issued within the same time frame as a PTAB Final Written Decision, or faster. These advantages are not insignificant in today’s patent monetization landscape. But, the ITC is not without its PTAB trade-offs for Patent Owners.

Continue Reading PTAB Estoppel May Not Stick at ITC

Stage of Litigation & Similarly Situated Litigants Now General Plastic Factors?

As I have mentioned on a few CLE panels as of late, the recent changes to the Patent Trial & Appeal Board’s (PTAB) Trial Practice Guide invite parties to suggest additional General Plastic factors.  These factors are applied by the Board to determine whether to exercise its discretion to deny institution under § 314(a) in applicable cases.  With the efficacy of 325(d) now muted after SAS (given it’s ground-by-ground based application), the potential “kill shot” offered by 314(a) has attracted more attention in recent Patent Owner Preliminary Responses.

With the new Trial Guide update barely a month old, the Board has already begun to expand its General Plastic factors. Two September decisions highlight the degree to which the Board may be more open to considering parallel litigation dynamics as additional factors. Continue Reading PTAB Expands Equitable Considerations to Deny AIA Trial Petitions

April Webinar to Explore Bio/Pharma Deals & Disputes in the PTAB Era

This month’s edition of the PatentsPostGrant.com free webinar series will be held on Wednesday May 2nd, 2018 @ 2PM. The April webinar is entitled: Bio/Pharma Deals & Dispute Resolution in the PTAB Era.

Register (here)

The emergence of the Patent Trial & Appeal Board (PTAB) as a forum for patent validity disputes has altered the business landscape of both innovator and generic companies alike. PTAB proceedings are now commonplace for Orange Book pharmaceutical patents and Purple Book biologic/biosimilar patents. An understanding of the business impact of these proceedings from both a transactional and litigation perspective is critical for successful, in-house navigation. Likewise, trends within and across these proceedings, including final patent validity outcomes, impact on traditional Hatch-Waxman procedures, types of patents (compound, formulation, method of use) involved, and the timing of challenges, are critical components to a successful litigation and portfolio development strategy.

Please join Ropes & Gray’s PTAB Chair Scott McKeown, Life Sciences IP Litigation Chair Filko Prugo, and IP Transactions Partner Melissa Rones for the upcoming webinar providing a holistic analysis of these important Bio/Pharma disputes.

The formal portion of the webinar will begin at 2PM Eastern and will last for approximately 50-60 minutes. After the presentation there will be a Q&A period. To attend the webinar please sign up via the link above. You will receive a registration confirmation email immediately. One hour prior to the webinar you’ll receive another email with a link and instructions for joining the presentation. CLE credit will be provided (CA, NYC, VA).

PTAB Trial Practice Changes & Evolution of Parallel Litigation

Two separate webinars this week for those looking to keep abreast of PTAB evolution and related litigation practices.

First, up, this month’s edition of the PatentsPostGrant.com free webinar series will be held on Thursday, February 22nd @ 2PM (EST). Roadblock PTAB: Litigation Strategies & IPR Antidotes. Register (here)

Then, on Friday February 23rd @ 1PM (EST), join me and Rob Greene-Sterne of Sterne Kessler for PLI’s one hour briefing: PTAB Trial Practice After Wi-Fi One: Challenges and OpportunitiesThis program will explore the now softened 314(d) appeal bar and the anticipated expansion of appellate issues, as well as corresponding impacts on PTAB trial practices. Register (here)