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Inter partes reviews (IPRs) and other Patent Trial and Appeal Board (PTAB) proceedings are now a crucial strategic weapon for companies in bet-the-business patent litigation. The America Invents Act (AIA) of 2011 created IPRs to afford a petitioner the opportunity to challenge the novelty and obviousness of issued U.S. patents based on prior art patents and printed publications.
Similarly, the AIA created Post-Grant Reviews (PGRs) for challenging issued U.S. patents having filing dates after March 15, 2013 on any grounds for patentability and Covered Business Method Patent Review (CBM) for challenging the validity of certain U.S. business method patents. In each proceeding, a three member panel of administrative law judges at the PTAB hear argument and determine the patentability of the challenged patent in a trial-like setting.
Courts appear increasingly willing to stay patent litigations while the PTAB conducts these Patent Office Trials. Thus, the interplay between litigation and PTAB strategies can provide important opportunities, as well as risks, for patent litigants. To keep pace with the rapidly increasing number of post-grant challenges to patents, the PTAB is demanding strict adherence to its rules and compressed schedules, making it even more important for clients to work with an experienced firm that has a proven track record.
Covington has handled nearly 100 PTAB proceedings and achieved successful outcomes in 100% of the cases that went to judgment. Covington attorneys represent both patent owners and petitioners in IPR and other PTAB proceedings, in all fields of technology, and regularly advise clients on combined litigation and PTAB strategies, and on PTAB decisions and processes.
Covington’s Patent Office Trials Practice is headed by Andrea Reister, the rare “triple threat” - a lawyer with successes before the PTAB; experience litigating District court cases, including Hatch-Waxman; and leadership in Federal Circuit appeals - and includes patent attorneys from Covington’s highly regarded Patent Litigation and Patent Prosecution practices. This unique combination of patent prosecution and litigation talent puts Covington’s clients in position to successfully challenge and respond to instituted IPR, PGR and CBM proceedings while efficiently managing simultaneous litigation.
Representation of Biogen in defeating Swiss Pharma’s attacks on three patents covering TYSABRI®, an antibody biologic for treating patients with multiple sclerosis. The Patent Trial and Appeal Board declined to institute a trial on all three of Biogen’s patents. The PTAB adopted the detailed reasoning from Covington’s briefs, finding that Swiss Pharma’s evidence and expert testimony did not demonstrate a reasonable likelihood of prevailing at trial.
Representing Bristol-Myers Squibb Company, as patent owner in an IPR proceeding brought by Momenta Pharmaceuticals, Inc., challenging the validity of a patent covering the formulation of BMS’s biologic ORENCIA. Oral argument in the proceeding was conducted on September 23, 2016, and a final written decision is expected from the Patent Trial and Appeal Board in January 2017.
Representing Eli Lilly and Company as petitioner in an IPR proceeding challenging the validity of a patent owned by the Trustees of the University of Pennsylvania (“Penn”). In concurrent district court litigation (in which we also represent Eli Lilly), Penn alleges that its patent covers methods of using Eli Lilly’s biologic Erbitux® for treating cancer patients. In July 2016, the PTAB instituted trial on all challenged claims, and later that month, the district court entered a stay of the litigation pending the IPR proceeding.
Represented Indivior UK Limited (f/k/a RB Pharmaceuticals Limited), as patent owner in an IPR proceeding, brought by Teva Pharmaceuticals USA, Inc., challenging one of three Orange Book listed patents for Suboxone® sublingual film, a treatment for opioid dependence. In a decision rendered on June 10, 2016, the PTAB denied Teva’s petition in its entirety, adopting the rationale presented in Covington’s patent owner preliminary response.
Representing Anacor Pharmaceuticals as patent owner in three IPR proceedings, brought by a Coalition for Affordable Drugs entity, challenging two Orange Book listed patents for KERYDIN, Anacor’s drug for treatment of onychomycosis. Oral argument is scheduled for early November 2016, and a final written decision is expected in February 2017.
Representing LifeCell Corporation as petitioner in an IPR proceeding challenging a patent owned by LifeNet Health directed to soft tissue graft compositions. Trial was instituted in March, with a final written decision due by March 2017, and the PTAB granted the patent owner’s request for adverse judgment in August 2016, cancelling all claims in the patent and handing our client LifeCell, a complete win.
Representation of Texas Instruments Incorporated (“TI”) as petitioner in an IPR proceeding relating to monolithic battery chargers. In a clean sweep victory in a patent office trial, the patent owner, Unifi Scientific Batteries (“USB”) ultimately requested judgment in TI’s favor. USB had sued TI in the Eastern District of Texas in March 2012, alleging infringement of its patent directed to monolithic battery chargers. In March 2013, Covington filed a petition on behalf of TI in the Patent Office seeking invalidation of 16 claims. One week before oral argument, USB filed a Request for Adverse Judgment, disclaiming all of the 16 challenged claims. In June 2014, the Patent Office granted the Request and entered the judgment, successfully ending the trial. Covington also represented TI in the co-pending litigation, which settled successfully.
Representation of Bockstar Technologies LLC as patent owner in an IPR proceeding brought by Cisco Systems Inc., challenging the validity of four patents related to routers, switches, and computerized telephony. Covington filed substantive initial responses for three of the four petitions. In decisions on February 2 and 3, 2015, the PTAB rejected one of the petitions in its entirety, and instituted only as to a single patent claim in a second petition—effectively eliminating half of Cisco’s petitions at a single stroke. The proceedings were terminated shortly thereafter as part of a global settlement.
Representation of Samsung Electronics Company, Ltd. as petitioner in nine IPR proceedings relating to mobile communications and network-enabled audio/video devices and players. Samsung prevailed in all nine of the IPR proceedings. After oral argument in two of the proceedings, the Board issued Final Written Decisions finding all challenged claims unpatentable. Black Hills requested adverse judgment on all challenged claims in five of the proceedings, and filed motions to amend to cancel the challenged claims in the remaining two proceedings.
Representation of Samsung Electronics Company, Ltd. as petitioner in two IPR proceedings adverse to patent owner Boston University relating to gallium nitride semiconductor devices. The two proceedings were terminated following successful settlement of the underlying litigation, in which Covington represented Samsung.
Representation of Peregrine Semiconductor as patent owner in an IPR proceeding brought by RF Micro Devices. The patent is directed to high frequency RF switches for 4G access technologies. Covington also represented Peregrine in the co-pending litigation. Both the IPR and the litigation were settled successfully for Peregrine.
Representation of Knowles Electronics, LLC as patent owner in four IPR proceedings relating to silicon microphone packages and MEMS microphones, all of which were successfully terminated by settlement. Covington also represented Knowles in the co-pending litigation, which successfully settled.
Representation of JPMorgan Chase as petitioner in four CBM proceedings for patents owned by Maxim Integrated Products relating to secure electronic transactions, which were terminated by settlement of the co-pending litigation.
Representation of Ariba, Inc. as patent owner in a CBM proceeding relating to operating resource management systems. Covington also represents Ariba in the co-pending litigation. The CBM proceeding was terminated following successful settlement of the patent infringement aspect of the litigation. We have also represented Ariba as requester in two inter partes reexamination proceedings relating to a business-to-business electronic clearinghouse. All original patent claims, as well as claims added during both reexamination proceedings, were rejected. Favorable settlement for Ariba was promptly obtained pursuant to filing of the reexamination requests.
Representation of multiple petitioners, including The New York Times Company and CBS Interactive, in an IPR proceeding (and in seven inter partes reexamination proceedings) for patents held by Helferich Patent Licensing, LLC. The patents relate to cell phone messaging and were the subject of co-pending litigation in which the requesters were defendants. In March 2014, the PTAB provided another clean sweep IPR victory when it invalidated all 41 challenged claims of the patent. Following Covington’s argument in April 2015, the Court of Appeals for the Federal Circuit affirmed the PTAB’s decision, securing the clients’ victory.
Representation of Research Corporation Technologies, Inc., and licensees Harris FRC Corporation and UCB, as patent owner in an IPR proceeding, brought by a group of generic companies, challenging the patent claiming Vimpat®, UCB’s anti-epileptic drug. In January 2015, the Patent Trial and Appeal Board (“PTAB”) rejected the generics’ petition in its entirety, finding that the petitioners failed to establish a “reasonable likelihood” of showing unpatentability of any claim of the Vimpat® Patent.
Representation of Warner Chilcott as patent owner in an IPR proceeding, brought by the generic company Mylan Pharmaceuticals, challenging the patent claiming LO LOESTRIN, Warner Chilcott’s oral contraceptive. After Mylan filed its petition, the parties settled favorably without a single claim being invalidated or the PTAB instituting review on a single claim of the LO LOESTRIN Patent. Covington successfully represented Warner Chilcott in ANDA litigation against prior generic filers on LO LOESTRIN, obtaining a favorable judgment after a bench trial which was upheld by the Federal Circuit.
Representation of Elbit Systems Land and C4I Ltd. in securing the PTAB’s denial of four separate Patent Office challenges over the course of 2016. In the latest decision, issued in mid-July 2016, the PTAB denied the fourth and final patent office challenge filed by Hughes Network Systems, LLC against Elbit’s patents. In November 2015, Hughes filed two petitions for inter partes review against Elbit’s ’073 patent, and one petition against Elbit’s ’874 patent, both of which are asserted against Hughes in the co-pending district court litigation. Hughes filed a second petition against the ’874 patent in January 2016. The PTAB denied the first challenge to the ’874 patent, and both challenges to the ’073 patent, in April. Desperate to resurrect its challenge to the ’874 patent, Hughes filed a request for rehearing on the first petition, which also was resoundingly rejected in July 2016.
Representation of Elbit Systems of America, LLC as petitioner in an IPR proceeding relating to a patent directed toward a system and method for tracking the motion or orientation of an object relative to a moving reference frame, such as in a head-mounted display. The patent is owned by Thales Visionix, Inc., and Covington also represents Elbit in the co-pending litigation in the Court of Federal Claims. In October 2016, the PTAB issued its final written decision holding as unpatentable more than half of the challenged claims.
Representation of Aristocrat Technologies Inc. in patent infringement litigation brought by IGT on an array of patents directed to gaming devices. On behalf of Aristocrat, Covington prepared and filed IPR petitions on eleven patents, and Covington represented Aristocrat as the patent owner in four IPR proceedings initiated by IGT. The parties reached a favorable settlement of the litigation, and termination of the IPR proceedings is in process.
Representing Knappco, a subsidiary of Dover Corporation, in an IPR against CHS Inc. regarding systems and methods to reduce the potential for unintentional mixing of liquid types in tank systems. In June 2016, the PTAB instituted proceedings on all claims on all grounds. The patent owner failed to file any responsive papers, and the PTAB entered adverse judgment against CHS cancelling all challenged claims.
June 30, 2015, Webinar