One-year Statutory Bar

In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In particular, 35 U.S.C. §102(a)(1) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”
Continue Reading Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

The America Invents Act (AIA) allows a petitioner to request joinder of an inter partes review (IPR) of a patent with an IPR proceeding previously instituted with respect to that patent so long as the request for joinder is filed “no later than one month after the institution date of any inter partes review for which joinder is requested.” 37 C.F.R. 42.122(b). The joinder provision (35 U.S.C. 315(b)) provides:

If the Director institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under Section 311 that the Director, after receiving a preliminary response under Section 313 or the expiration of the time for filing such a response, determines warrants the institution of an inter partes review under section 314.

In many cases, a petitioner requesting joinder is the same petitioner who had filed the previously-instituted proceeding. Such requests for joinder are typically made to circumvent the time bar imposed by 35 USC 315(b), which bars the institution of an IPR based on a petition that is “filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.” This time bar does not, however, apply to a request for joinder.
Continue Reading PTAB Panels Are Divided Regarding Interpretation Of The Joinder Provision

In a decision this month (IPR2013-00308), the Patent Trial and Appeal Board (PTAB) has ruled against Stanford University’s patented method for detecting Down’s syndrome and other chromosomal defects, finding all of the challenged claims 1-13 invalid. The Stanford patent, U.S. Patent Number 8,296,076, is licensed to Verinata Health Inc., and is the subject of patent infringement litigation initiated by Verinata and Stanford against Ariosa Diagnostics in 2012 (Verinata Health Inc. et al. v. Ariosa Diagnostics Inc. et al., case no. 3:12-cv-05501, N.D. California). (Verinata is now owned by genetic instruments maker, Illumina, which acquired it in 2013 for over $350 million dollars.) The remaining two claims of US Patent 8,296,076, independent claim 14 and its dependent claim 15 directed to a “method of testing for an abnormal distribution of chromosome in a sample comprising a mixture of maternal and fetal DNA,” were not challenged in the IPR2013-00308.

In two other recent decisions in October, 2014, Verinata’s own IP survived challenges by Ariosa. In final decisions on IPR 2013-00276 and IPR2013-00277, the PTAB decided that Ariosa had failed to meet its burden of showing by a preponderance of evidence that the claims of U.S. Patent Number 8,318,430 were invalid, representing a rare outcome where all of the challenged claims in a IPR proceeding were successfully defended. The Verinata ‘430 patent is the subject of separate pending litigation in the Northern District of California between Verinata and Ariosa (Illumina, Inc. v. Ariosa Diagnostics, Inc., case no. 3:14-cv-01921, N.D. California).
Continue Reading Stanford Patent Found Invalid in IPR proceedings but Licensee’s IP Survives

Petitioners seeking to invalidate patents via the new AIA inter partes review (“IPR”) proceedings at the U.S. Patent and Trademark Office (PTO) appear to be increasingly willing to file multiple petitions against the same patent. In several instances, the same petitioner has filed three, four or even five petitions against a single patent. An explanation for this tactic may lie in the Patent Trial and Appeal Board (PTAB) practice of culling the grounds that will be considered when an IPR is initiated by invoking its vertical or horizontal redundancy rules. (For our prior articles on the PTAB redundancy rules, click here and here.) However, this phenomenon may also reflect the formidable “fire-power” that can be mustered by some challengers (often multinational corporations) against patent owners.

For example, in December 2013, Subaru (together with a host of other car manufacturers) filed five IPRs against U.S. Patent No. 6,324,463 (relating to cruise control indicators). In October 2013, Apple filed four IPR petitions against U.S. Patent No. 7,010,536 (relating to multi-user networking systems). Similarly, Microsoft filed four IPR petitions in May 2013 against U.S. Patent No. 6,724,403 (relating to graphical user interfaces). By asserting different grounds in separate petitions, these challengers were apparently trying to minimize the likelihood of dismissal of any of their asserted grounds for invalidity based on redundancy.


Continue Reading If at First You Don’t Succeed: File, File And File Again