Recent Patent Trial and Appeal Board rulings should lead patent owners involved in a post-grant proceeding to be even more careful when considering settlement offers.
Unlike previous re-examination proceedings before the U.S. Patent and Trademark Office, the America Invents Act allows for termination in the event of settlement of newly created post-grant proceedings. See 35 U.S.C. §§ 317(a), 327(a). As a consequence, just 16 months since these proceedings started, the PTAB is encountering an increasing number of joint motions to terminate the proceedings.
In 2013, inter partes review and covered business method review — two new procedures created by the America Invents Act — fully joined ex parte re-examination as options for challenging validity in the U.S. Patent and Trademark Office. Each offers a profoundly different forum for adjudicating validity compared to U.S. district court. At the same time, many PTO-based challenges proceed in parallel with a related district court litigation, creating the possibility of inconsistent results — a possibility that was realized in two important 2013 decisions: Fresenius USA Inc. v. Baxter International Inc., __ F.3d __ (Fed. Cir. 2013) and Apotex Inc. v. Alcon Pharmaceuticals Ltd., IPR2013-00012 (PTAB Mar. 19, 2013). Both decisions illustrate the complexities that the availability of different tribunals has created, and the challenges that litigants face when executing an enforcement or defensive strategy.
On November 13, 2013, the Patent Trial and Appeal Board (PTAB) issued the first final written decision in an IPR proceeding. The PTAB held that the three claims that were the subject of the trial were unpatentable as obvious over combinations of multiple references. Several aspects of the PTAB’s decision are notable.