The Patent Trial and Appeal Board (“PTAB”) allowed what appear to be the second and third amendments in an inter partes review (“IPR”) in Riverbed Technology, Inc. v. Silver Peak Sys, Inc., IPR Nos. 2013-00402 (Paper No. 35) and 2013-00403 (Paper No. 33); the first being in response to an unopposed Motion to Amend in International Flavors & Fragrances Inc. v. United States, 2013-00124 (Paper No. 12). The PTAB has not granted many Patent Owner’s request to amend claims based on a rigorous standard as set forth in PTAB’s previous decisions (see e.g., Idle Free Sys., Inc. v. Bergstrom, Inc. IPR2012-00027 (Paper No. 66)), but the PTAB’s pair of decisions on December 30, 2014, provides some insight on how to meet the PTAB’s high bar in amending claims.
House Reintroduces Bill that would Eliminate BRI standard in IPR and PGR Proceedings one day after Federal Circuit finds BRI standard is proper
On February 5, 2015, the Judiciary Committee of the House of Representatives’ re-introduced an anti-patent troll bill (Innovation Act of 2015, H.R. 9). This bill is essentially the same as the bill that was passed by Congress in December, 2013 but stalled in the Senate.
In an inter partes review (“IPR”) proceeding, a patent owner should submit any relevant evidence that might lead to a nonobviousness determination. Relevant evidence may include secondary indicators of nonobviousness such as (1) commercial success, (2) long-felt but unsolved needs, and (3) failure of others. See Graham v. John Deere Co., 383 U.S. 1 at 18. However, “[t]o be given substantial weight in the determination of obviousness or non-obviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore the examiner must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations.” (MPEP 716.01(b) citing Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985)).
In Par Pharm., Inc., et al. v. Jazz Pharm., Inc., CBM2014-00149, 00150, 00151, and 00153, three generic drug companies challenged four Orange Book listed patents – 7,895,059 (“the ʼ059 patent”), 8,457,988 (“the ʼ988 patent), 7,668,730 (the ʼ730 patent), and 8,589,182 (“the ʼ182 patent”) – in a Covered Business Method (CBM) Review. These patents are listed in the Orange Book under NDA 021196 for Xyrem®, which contains the API sodium oxybate.