As noted in our June 27, 2014 post, the PTAB had requested comments on a number of procedures, including amendments. The rules had made it so difficult to make amendments, that to date there was only one successful amendment, and it was uncontested. The PTAB has responded with new guidelines for amendments, which are set forth in the order linked below. The main improvement is allowing the claims themselves in an appendix.
Four Orange Book-listed U.S. patents owned by Jazz Pharmaceuticals, Inc. have been challenged in petitions for covered business method (CBM) patent review filed at the U.S. Patent and Trademark Office by Amneal Pharmaceuticals, Par Pharmaceuticals, and Roxane Laboratories. These actions appear to be the first time that Orange Book patents, or indeed any pharmaceutically related patents, have been challenged under CBM post-grant review that was designed to cover financial services related patents.
In a recent message posted on its America Invents Act (AIA) Blog, Patent Trial and Appeal Board (PTAB) judges give guidance on what discovery is allowed, which is very limited. A number of cases with specific examples are cited. Those include allowing discovery of lab notebooks relied on in expert testimony, emails between experts, and discovery related to real party-in-interest and privity issues. Discovery requests denied include those regarding commercial success and copying of the product by the petitioner to show non-obviousness.
On Sept. 26, 2014 the Patent Trial and Appeal Board (PTAB) designated 7 decisions over the last year as “informative.” The decisions deny multiple petitions using the same prior art, or prior art that wasn’t shown to be unknown at the time of the first petition. The decisions also say including better arguments doesn’t justify a new petition. In short, the petitioner is expected to pick the best prior art and arguments in the initial filing.
The PTAB has interpreted the joinder provisions to deny joinder if the joinder petitioner is already a petitioner in the pending IPR. Target Corp. v Designation Maternity Corp., IPR2014-00508 (paper 18, September 25, 2014), an expanded panel of the PTAB denied a motion for joinder that accompanied a petition filed more than one year after Target had been sued for infringement. The PTAB decided that joinder of petitions is permitted only when the party filing the second petition is not the same as a party to the pending IPR proceeding. Thus, as a matter of statutory interpretation, a second petition by the same petitioner can never be joined with a prior petition. If the second petition is filed after the one year date, it will be denied. Even if within the one year period, it may still be denied if it raises the same or substantially the same issues.
The June 2014 U.S. Supreme Court’s Alice Corp. decision has enhanced the ability to win CBM challenges. Salesforce.com Inc. successfully invalidated U.S. Patent No. 8,095,413 in CBM2013–00024. The PTAB said that “We find that the challenged claims are directed to an abstract idea, the creation and use of models to aid in processing management information by organizing and making the information readily accessible by the collaborators of the project.”
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