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

As we had reported earlier, a patent owner has a heavy burden in amending claims in an inter partes review (IPR) proceeding.  The recent case of Nichia Corp. v. Emcore Corp. (IPR2012-00005) provides an example of obstacles that a patent owner may face when attempting to amend the challenged claims.  In this case, the patent owner (Emcore) filed a motion with the PTAB to request leave to cancel certain challenged claims and replace them with new claims.  The PTAB denied Emcore’s motion to amend.
Continue Reading The PTAB’s Denial of Patent Owner’s Motion to Amend Underscores the Obstacles that Patent Owners Face In Amending Challenged Claims

The addition of discovery to review proceedings before the Patent Trial and Appeal Board (PTAB), such as inter partes review, and post-grant review, have opened up the doors to new kind of challenges before the PTO.  However, attempting to receive additional discovery beyond that required by the rules in proceedings before the PTAB is not as easy as in District Court litigation.  In post-grant and inter partes proceedings, 37 C.F.R. §42.51(b)(2) provides the rules for additional discovery: parties are given the option to agree to additional discovery between themselves, and if they are unable to do so, the moving party must present a reasoning to the PTAB as to why the additional discovery is necessary “in the interests of justice.”  In post-grant reviews, the moving party is restricted even more because it must show that the additional evidence is directly related to factual assertions advanced by either party in the proceeding (See 37 C.F.R. §42.224).
Continue Reading No Fishing Allowed – Limits on Discovery Before the PTAB

August was another busy month for the USPTO’s Patent Trial and Appeal Board with nearly seventy new petitions filed challenging issued patents.

Last week at ceremonies in Washington, D.C. commemorating the second anniversary of the America Invents Act (AIA), Chief Administrative Patent Judge James Smith of the PTAB noted that over 500 hundred petitions had

The proverbial ink had barely dried on our first posting on this topic (noting that few parties in Inter Partes Review (IPR) proceedings had taken advantage of the settlement option) when we saw an outbreak of judgments terminating proceedings by mutual consent.  It seems that parties are indeed availing themselves of the provisions of the AIA that allow terminations without findings when they reach a settlement agreement.

On July 22, 2013, the PTAB terminated eighteen different IPR proceedings involving Oracle Corporation and Clouding IP, LLC. 
Continue Reading Are Peace and Love Breaking Out at the PTAB? – (Settlement of IPR Proceedings: Part 2)

When Congress enacted the America Invents Act (AIA) and created the new administrative proceedings for challenging patents (Inter Partes Review, Post Grant Review and Covered Business Method Review), the AIA provided an incentive for the parties to resolve their differences by settlement.  However, less than five percent of the Inter Partes Reviews (IPRs) filed last year have been settled “out-of-court” so far.
Continue Reading Hold’em or Fold’em? – So Far Patent Owners Show Little Interest In Settling IPR Proceedings

In a number of IPR requests, the PTAB has relied on its authority to “deny some or all grounds for unpatentability for some or all of the challenged claims” to refuse to institute IPR based on certain invalidity grounds put forth by a challenger that the PTAB considered as cumulative relative to other grounds for which the review was instituted. 37 C.F.R. 42.108(b). The PTAB has reasoned that its denial for review of redundant invalidity grounds comports with the policy that the rules for conducting IPR proceedings be “construed to secure the just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R.  42.1(b).
Continue Reading Too Much of a Good Thing: The Challenge of Being Comprehensive and Yet not Redundant

Once a petition for inter partes review is filed, the patent owner has 3 months under the PTO rules (Rule 42-107) to file an optional preliminary response –  before the PTAB decides whether or not to institute proceedings.  Considering that the petitioner has typically spent many months preparing the petition, including preparing detailed claim charts and expert declarant testimony, the patent owner is usually at a disadvantage in mounting a rapid rebuttal.
Continue Reading To Respond or Not To Respond? – The Patent Owner’s Dilemma of a Preliminary Response