The U.S. Supreme Court’s decision this week in SAS Institute v. Iancu has upended a major provision of the U.S. Patent and Trademark Office (PTO) regulations for inter partes and post grant review proceedings conducted by its Patent Trial and Appeal Board (PTAB). By concluding in a 5-4 decision that the agency lacks the authority
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
Much has occurred during the first year after the America Invents Act (AIA) established several new procedures for the public to challenge issued patents and a new administrative court to hear these cases. Here are some observations on the first year of this evolving practice.
1. Many More IPR Petitions Have Been Filed Than CBM Review Petitions.
Although Congress expected the Covered Business Method (CBM) review process would be widely used by irate businesses tired of dealing with so-called “business method” patents, only 67 CBM petitions were filed during the first year compared to nearly 500 petitions for Inter Partes Review (IPR). Many practitioners thought the more expansive grounds for challenge in CBM review (permitting challenges based on prior public uses and sales as well as prior art publications) would have piqued more interest, especially in tandem with recent Supreme Court decisions roundly criticizing non-technological patent claims. However, IPRs have been more widely invoked, probably reflecting the much larger number of non-business method patents being asserted in litigation.
2. The PTAB is Quite Willing to Initiate IPR Proceedings when a Petition is Filed
Over 86% of the IPR petitions filed in the first year have been granted –at least in part. …
Continue Reading Lessons From The First Year Of Post Grant Proceedings In The U.S.
The United States Patent and Trademark Office (“PTO”) is quickly becoming a popular forum for parties who have been accused of patent infringement. A defendant can challenge the validity of an asserted patent by filing a petition for inter partes review (“IPR”) with the PTO while the infringement suit is pending in another forum. After filing an IPR, the potential infringer can move to stay the co-pending infringement suit pending a decision in the IPR. To evaluate whether a stay will be granted, is necessary to consider in what forum the patent litigation suit is taking place. Different forums use different approaches and may reach different results when determining whether to grant a stay.
Patent infringement suits are most often brought in the federal district courts under Section 281 of the US Patent Laws (35 U.S.C. § 281). However, the United States International Trade Commission (“USITC”) also has limited jurisdiction to hear allegations of infringement. Under Section 337 of the Tariff Act of 1930 (19 U.S.C. § 1337), the USITC has jurisdiction to conduct investigations into allegations of certain unfair practices in import trade. These practices include infringement of certain statutory intellectual property rights, including patent rights. However, differences between federal court practice and ITC regulations lead to judges taking different approaches when considering whether to grant a motion to stay pending an IPR, potentially leading to different results.…
Continue Reading Differing Approaches to Stays of Co-Pending Litigation
The regulations implementing Inter Partes Review (“IPR”), as well as Post-Grant Review (“PGR”), allow the Patent Trial and Appeal Board (“Board”) to join or stay certain proceedings by motion or sua sponte. See 37 C.F.R. § 42.122 (IPR), and 37 C.F.R. § 42.222 (PGR). This provision seems to make a good deal of sense in terms of avoiding duplication of effort and possible inconsistent results.…
Continue Reading Too Many Cooks in the Kitchen? – PTAB Puts Parallel Reviews By Central Reexam Unit on Hold