April 8, 2016Newsletter

This Week at the Board - April 8, 2016

Final Rule Changes for PTAB Trials Announced

On March 31, 2016, the U.S. Patent and Trademark Office announced a final rule change for trial proceedings before the PTAB, including inter partes reviews. For more information about the final rule changes, please see the following Michael Best client alert: Final Rule Changes for PTAB Trials Announced

Update on Kyle Bass and the Coalition for Affordable Drugs: Attempts to Invalidate Pharmaceutical Patents

In early 2015, Kyle Bass, the head of hedge fund Hayman Capital Management, L.P., began filing a series of inter partes review petitions with the Patent Trial and Appeal Board (PTAB) in an effort to invalidate pharmaceutical patents. From February through September 2015, Bass and the Coalition for Affordable Drugs filed 33 petitions against various pharmaceutical companies seeking inter partes review before the PTAB. The Board has entered an institution decision for all of these petitions, granting 18 of the 33 petitions. This puts Bass and the Coalition’s success rate at 54.5%. Most recently, in November 2015, Bass and his intellectual property consultant Erich Spangenberg filed two petitions on their own, which are currently pending before the Board.

At a recent presentation in Chicago on April 5, 2016, as part of the IP Lecture Series at The John Marshall Law School, the Honorable Nathan Kelley was asked to comment on Bass and the Coalition for Affordable Drugs and their actions at the PTAB. Kelly indicated that the PTAB does not treat these cases differently from any other and emphasized that the Board decides the cases on facts, regardless of the Petitioner.

Cuozzo Briefs Weigh in on Claim Construction Standard and Judicial Review

A total of 39 amicus briefs have been filed in the U.S. Supreme Court Cuozzo case thus far. Many of these briefs, particularly from industries and patent owner associations, are in support of changing the claim construction standard from BRI (Broadest Reasonable Interpretation) to the more narrow standard currently used in District Courts. Many of the briefs are also in support of allowing judicial review of institution decisions, which currently are considered non-reviewable. Links to each of the briefs, as well as the briefs of the parties filed thus far in the case, can be found here:  

Cuozzo Docket:


Claim Construction in the PTAB and District Courts
FCBA Patent Litigation 2016: The Courts and the Patent Trial and Appeal Board

April 28, 2016

Speaking Engagement

Grounds for Sanctions at the PTAB
May 3, 2016
12:00 - 1:00 PM
Complimentary Webinar

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