Ten Key Board Decisions in 2015 – Part One

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

As of December 31, 2015, the PTAB had reached a final disposition on 2,749 petitions for inter partes review (IPR), post-grant review of a covered business method (CBM), or post-grant review (PGR). Of that number, roughly half (1342) resulted in institution, of which 817 resulted in a final written decision. This two-part series will provide a summary of what were the most important, or at least most interesting, decisions of 2015.

1.) Zerto, Inc. v. EMC Corp., Case IPR2014-01254, Paper 32 (Feb. 12, 2015)

This decision is important for its explanation of the factors that support finding that an entity is a real-party-in-interest that must be named in a petition. In this case, the PTAB denied institution of an IPR filed by Zerto, Inc. because it believed that a real party-in-interest (Zerto Ltd.) was omitted. The PTAB cited the existence of a parent-wholly-owned-subsidiary relationship between the two entities, an overlap in the Board of Directors, a lack of distinction between the two on a website, and commingled financial reports as relevant factors. Other factors have been identified in Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., IPR2013-00453, Paper 88 and Galderma S.A. v. Allergan Industrie, SAS, IPR2014-01422, Paper 14.

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PTAB Finds Service of Complaint Was Proper, Denies IPR Petitions Filed One Day Too Late

Author: Abhay A. Watwe
Editor: James Stein

The PTAB denied Lannett Holdings’ petitions for IPR of AstraZeneca’s U.S. Patent Nos. 6,750,237 and 7,220,767 because the petitions were filed one day after the one-year bar date. Lannett Holdings, Inc. v. AstraZeneca AB, IPR2015‑01629, Paper 14 at 8 (Jan. 27, 2016); IPR2015-01630, Paper 13 at 10 (Feb. 2, 2016). In its decisions, the PTAB rejected Lannett’s argument that AstraZeneca’s service of complaints for infringement of the ’237 and ’767 patents was ineffective and did not trigger the one-year period for filing an IPR petition.

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Lex Machina Releases Detailed Report on Patent Trial and Appeal Board Proceedings

Author: Maureen D. Queler
Editor: James Stein

Lex Machina has released a report providing insight into proceedings before the Patent Trial and Appeal Board from its inception in September 2012 through December 2015. The report aims to provide key trends in PTAB trials. The key findings include the top resolutions (denial of institution, settlement, etc.), the technology centers handling the greatest number of trials, the timing of the trials, the top law firms involved, and the top parties, among others. The report states that it is unique in capturing the entire life-cycle of every PTAB trial, including the pre-institution phase which is often overlooked. Finnegan is pleased to be identified as “the most experienced firm in representing petitioners,” as well as for its work defending patent owners.

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