February 2017 — For Petitioner’s Without Federal Standing IPR Decisions are Final

Phigenix, Inc. petitioned for an Inter Partes Review (“IPR”) of Immunogen, Inc.’s patent
on the ground that the claims of the patent were obvious over the prior art. The Patent Trial
and Appeal Board (“PTAB”) found that the claims were valid as non-obvious. Phigenix then
appealed the PTAB’s decision to the Court of Appeals for the Federal Circuit (“CAFC”). The
CAFC dismissed the case, finding that Phigenix did not have federal “standing” to bring the case before the court. Phigenix, Inc. v. Immunogen, Inc. Appeal No. 2016-1544, 13 (Fed. Cir. Jan. 9, 2017). This decision effectively means that PTAB’s IPR decisions are final for any petitioner who does not have federal standing to sue the patent owner.
» Download the PDF

November 2016 — Manufacturing Services is not a Commercial Sale

Under § 102(b) of Title 35 of the United States Code, if an invention was “on‐sale” more than one year prior to filing an application for patent, then the invention was barred from being patented. The purpose of this law is to prevent inventors from profiting from their invention for an extended period of time prior to seeking exclusive rights to that invention.
» Download the PDF

July 2016 — Supreme Court Upholds AIA Provision Barring Judicial Review of Decision to Institute IPR

Under the America Invents Act (“AIA”), a third party may challenge the validity of an issued United States patent by filing a request for inter partes review (“IPR”). The Patent Trials and Appeal Board of the United States Patent Office (“Appeal Board”) will grant the request and institute the IPR if it finds a reasonable likelihood that the invention was previously disclosed or obvious to a person of ordinary skill in the art. In a statute establishing the IPR process, Congress stated that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and non-appealable.”
» Download the PDF

June 2016 — Despite Supreme Court Victory, Patent Owner’s $63 Million Award Vacated on Remand

In May of 2015, Commil USA (a patent holding company) won a major victory before the U.S. Supreme Court, which ruled that an accused infringer’s good faith belief in the invalidity of a patent is not a defense against an allegation of inducement of infringement.
» Download the PDF

April 2016 — How Not to Undersell the Invention in a Patent Application

BE CAREFUL WHAT YOU SAY IN A PATENT: In in re: Morsa, the Federal Circuit held a patent, which was drafted and prosecuted by an inventor himself, to be invalid as anticipated over a prior art reference. In finding anticipation, the Federal Circuit partially relied on the statements in the patent regarding the knowledge a PHOSITA would have.
» Download the PDF