Challenges to Real Parties-in-Interest Continue to Terminate IPR Proceedings
By: Jasper L. Tran and S. Christian Platt – Failure to thoroughly identify a real party-in-interest can undermine an IPR proceeding. The PTAB continues to enforce the requirement that the real parties-in-interest be thoroughly disclosed, this time terminating three IPRs where a petitioner failed to refute challenges to its identified real parties-in-interest.
The Scope Of IPR Petitioner Estoppel For Non-Petitioned Grounds Remains Uncertain
By: Tom Ritchie and John Marlott – District courts continue to split on the scope of estoppel as to non-petitioned prior art grounds, and the Federal Circuit has not yet addressed this split . Given the uncertainty, petitioners and patent owners should consider their litigation strategies carefully while awaiting further development.
Tribal Sovereign Immunity Doctrine Does Not Insulate Tribes From Board Actions
By: Tom Koglman and Joe Sauer – The PTAB denied Allergan’s motion to terminate IPR based on tribal sovereign immunity doctrine. In doing so, the Board “recognized differences between the state sovereign immunity and tribal immunity doctrines. In sum, Mylan has eliminated the possibility of relying on tribal immunity to insulate patents from IPR.
Be Advised: Settlement Does Not Necessarily End An IPR Or PGR
By: John Marlott – PTAB declines parties’ joint motion to terminate a post-grant proceeding filed one day after reaching settlement where the joint termination request came “very near the conclusion of the proceeding” and after the Board already “deliberated and decided the merits of the proceeding.”
Unsupported Assertions: Expert’s Persuasive Authority Suffers Without Directly Engaging Claim Limitations
By: John Evans, Ph.D. and Dave Cochran – Federal Circuit upholds a PTAB determination that an Expert’s unsupported assertion of equivalence undermined the Expert’s persuasive authority and carried no weight.