|AIA filings by month|
|Month||Number of petitions filed||Total|
Fourteen covered business method (CBM) review petitions were filed in January, down slightly from 14 in December 2014 but up from the nine in January 2014.
January also had the fourth-ever post-grant review petition filed. This was filed by American Simmental Association against a patent owned by Leachman Cattle of Colorado and Verified Beef. This was the second PGR it has filed against a patent owned by Leachman and Verified, following one in November.
Samsung filed the most PTAB petitions in January, with 11 IPR petitions and one CBM petition. This included six IPRs against patents owned by e-Watch, four IPRs against patents owned by Queen’s University at Kingston, one IPR against a patent owned by Rembrandt Wireless and a CBM against a patent owned by Smartflash.
The other most active petition filers during the month were: Mitek and Praxair, which both filed five IPRs each; and Apple, Itron, and Sonis, which filed four IPRs each.
The January activity followed a record year for the PTAB in 2014 (you can see who the busiest companies and people at the PTAB were in 2014 in our analysis here).
The activity so far this month also suggests 2015 will also be a strong year. According to Docket Navigator, 60 IPR and six CBM petitions were filed between February 1 and February 9. This is already more than the 54 IPR petitions filed in the whole of February 2014. Twelve CBM petitions were filed in the whole of February 2014.
CBM review of Orange Book-listed patents denied
January was also notable for a decision by the PTAB on CBM petitions. On January 13 the Board denied institution of four CBM reviews of Orange Book-listed patents owned by Jazz Pharmaceuticals. The petitioners were Par Pharmaceutical, Roxane Laboratories and Amneal Pharmaceuticals, all of whom were sued by Jazz for patent infringement because of their plan to market generic versions of narcolepsy treatment Xyrem.
“The CBM petitions, filed June 24 2014, are notable because it is the first time generic drug markers facing an infringement suit under the Hatch-Waxman Act, or indeed any petitioners, have sought CBM review of Orange Book-listed patents,” noted lawyers from Ropes & Gray.
The petitioners had argue that the claims were eligible for CBM review because the methods “would be used in commerce” and distributing a prescription drug “is financial in nature”. The PTAB in its denial said, however, that the claims themselves do not recite a financial product or service.
“At bottom, this decision underscores that the PTAB is likely to exclude from CBM review Orange Book-listed patents unless they expressly recite or otherwise clearly encompass something financial in nature, or incidental or complementary to a financial activity,” said the Ropes & Gray lawyers.
In this instance the PTAB used a narrow interpretation of what qualifies as a CBM. But a case that is on appeal at the Federal Circuit will be worth keeping an eye on. Versata is arguing that the PTAB uses too broad a definition of business method and should not have invalidated its patent relating to methods for determining the price of products offered to purchasing organisations. Versata has since argued that the PTAB’s Jazz ruling shows that the definition should be narrower and that its patent is not a covered business method.
|Number of AIA petitions, as of February 5 2015|
|FY (Oct 1-Sept 30||Total||IPR||CBM||PGR||DER|
|AIA petition technology breakdown FY 2015, as of February 5 2015|
|Technology||Number of petitions||Percentage|
|Electrical/computer - TCs 2100, 2400, 2600, 2800||432||63.8%|
|Mechanical/business methods - Cs 3600, 2700||163||24.1%|
|Chemical - TC 1700||27||4.0%|
|Bio/pharma - TC 1600||53||7.8%|
|Design - TC 2900||2||0.3%|
|Number of patent owner preliminary responses, as of February 5 2015|
|AIA trials instituted/disposals, as of February 5 2015|
|Trials instituted||Joinders||Denials||Total no. of decisions on institution ||Disposals|
|* final written decisions on the merits|
** judgments based on request for advance judgment
*** includes terminatins due to dismissal
****93 cases joined to 57 base trials for a total of 150 cases involved in joinder
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