Federal Circuit Lacks Jurisdiction to Review Institution Decisions

Author: James D. Stein
Editor:  Jeffrey A. Berkowitz

The Federal Circuit has ruled that it lacks jurisdiction to review a PTAB decision to vacate and terminate an IPR institution decision, either by appeal or writ of mandamus.

In GEA Process Eng’g, Inc. v. Steuben Foods, Inc., No. 15-1536 (Fed. Cir. Jun. 23, 2015), the Federal Circuit denied GEA Process’s parallel appeal and mandamus petition seeking review of the PTAB’s vacation of its institution decisions in IPR2014-00041, 00043, -00051, -00054, and -00055. In the IPRs, the PTAB initially instituted review but later vacated its institution decisions and terminated the proceedings after finding the petitions omitted GEA Process’s affiliate, GEA Procomac S.p.A, a real party-in-interest (RPI). Slip op. at 2-3. Correcting the petitions would have required granting a new filing date, but both petitioner parties were now time-barred under 35 U.S.C. §315(b), so the PTAB terminated the proceedings. See, e.g., IPR2014-00041, Paper No. 136 (Dec. 23, 2014). Continue reading

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House Committee Approves Innovation Act With Changes to AIA Post-Grant Proceedings

Author: C. Brandon Rash
Editor: Troy E. Grabow

On the heels of the Senate Judiciary Committee approving the PATENT Act, the House Judiciary Committee approved its own patent reform bill, known as the Innovation Act, on June 11, 2015. Several provisions in the Innovation Act impact AIA post-grant proceedings.

The Innovation Act includes several of the same changes regarding post-grant proceedings as the PATENT Act. For example, the Innovation Act changes the claim construction standard in AIA proceedings from the “broadest reasonable interpretation” standard to the Phillips standard used in district courts, and requires the USPTO to consider any prior district court constructions. The Act also allows the patent owner to submit new testimonial evidence with its preliminary response and allows the petitioner to file a reply to new issues raised in the preliminary response.

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PTAB to Consider Motions for Sanctions Against Kyle Bass and the Coalition for Affordable Drugs

Author: Linda J. Thayer
Editor:  Maureen D. Queler

The Board may soon rule on whether the Petitions for Inter Partes Review filed by the Coalition for Affordable Drugs VI, LLC (IPR2015-01092, -1096, -1102, and -1103) against certain patents owned by Celgene Corporation amount to an abuse of process deserving of sanctions. On June 9, 2015, the Board authorized Celgene to file motions for sanctions with its Patent Owner Preliminary Responses, which are due by July 30, 2015. Petitioner will have ten (10) business days to respond, and the Patent Owner five (5) business days to file a Reply. (Paper 7.)

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