This content is from: Patents

Data – 100 IPR petitions filed in January

A total of 115 PTAB petitions were filed in January. The Board also made a notable decision to deny CBM reviews of four Orange Book-listed patents owned by Jazz Pharmaceuticals

AIA filings by month
MonthNumber of petitions filed
Total

IPRCBMPGRDER
Sept 2012178

25
Oct 2012245

29
Nov 2012242

26
Dec 201232


32
Jan 201325


25
Feb 201330


30
Mar 2013382

40
Apr 2013274

31
May 2013457

52
Jun 2013658
174
Jul 2013693

72
Aug 2013629

71
Sept 2013738

81
Oct 20137719
298
Nov 20138918
1108
Dec 201310111

112
Jan 2014609

69
Feb 20145412
167
Mar 20147622

98
Apr 201414314
1158
May 201413119

150
Jun 20141846

190
Jul 201411610

126
Aug 2014159161
176
Sept 2014120211
142
Oct 201417916

195
Nov 2014102131
116
Dec 201417715
2194
Jan 2015100141
115
Cumulative Total2,399291382,702
Source: USPTO
According to statistics released by the USPTO, 100 inter partes review (IPR) petitions were filed with the Patent Trial and Appeal Board in January this year. This was down from the 177 filed in December 2014 but more than the 60 in January 2014.

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 TotalIPRCBMPGRDER
201225178

201356351448
1
20141,4941,31017725
20156776106322
Cumulative2,7592,45129638
Source: USPTO

AIA petition technology breakdown FY 2015, as of February 5 2015
TechnologyNumber of petitionsPercentage
Electrical/computer - TCs 2100, 2400, 2600, 280043263.8%
Mechanical/business methods - Cs 3600, 270016324.1%
Chemical - TC 1700274.0%
Bio/pharma - TC 1600537.8%
Design - TC 290020.3%
Source: USPTO

Number of patent owner preliminary responses, as of February 5 2015
FYIPR
CBM
PGR

FiledWaivedFiledWaivedFiledWaived
201323763332

201482920211618

2015459845461
Source: USPTO

AIA trials instituted/disposals, as of February 5 2015


Trials instituted

Joinders

Denials

Total no. of decisions on institution

Disposals




SettledFWD*RAJ**Other***
IPR



FY1316710****2620338021
FY1455715****193765210130391
FY1528678****11147513794147
CBM


FY131403173100
FY14911****30122271332
FY1522
1234191624
PGRFY15



2


DERFY1400330000
* 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
Source: USPTO

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