Intellectual Property

In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, founding host Dan Weinger speaks with Dr. Thomas Gniadek, a seasoned EU patent and trade secrets litigator with Simmons & Simmons in Munich, Germany, about the Unified Patent Court (UPC).

In two recent decisions, both issued on February 4, 2022, the United States Court of Appeals for the Federal Circuit (the “CAFC”) erased two huge patent damages awards because the underlying expert opinion on damages was untethered to the specific facts of each case.

In its analysis of Cont’l Auto. Sys., Inc. v. Avanci, L.L.C.,, the Fifth Circuit made several interesting findings: (1) that potential pass-through non-FRAND royalties are too speculative to create an injury in fact; (2) that SEP holders can fulfill their obligations to SSOs, with respect to suppliers, by actively licensing SEPs to downstream OEMs; and (3) that not all implementers are intended beneficiaries entitled to FRAND licenses.

Inter partes reviews have a very high institution rate. And worse, once instituted IPRs result in invalidated claims at an inordinately high rate. The best defense against an IPR petition is to convince the Patent Trial and Appeal Board to deny institution. In this post, the Mintz IPR team put together out top six tips for avoiding IPR institution.

On January 26, 2022, in what appears to be a case of first impression, U.S. District Court Judge John Z. Lee of the United States District Court for the Northern District of Illinois denied a biosimilar applicant defendant’s motion to dismiss patent infringement claims brought in the second phase of the parties’ Biosimilar Price Competition and Innovation Act (“BPCIA”) litigation. In so doing, Judge Lee held that the reference product sponsor (“RPS”) plaintiff is not limited to only declaratory judgment actions in the second phase of litigation under the BPCIA.

Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This precedential case is the first to hold that a forum selection clause can forfeit the right to challenge a patent’s validity by IPR. The takeaway from this case is that when entering into any type of patent related agreement, be careful to ensure that your right to file IPR petitions is not stripped away, particularly by way of a forum selection clause which is “prima facie valid and should be enforced” in the words of the Federal Circuit.

While there have been some adverse decisions from individual administrative law judges at the US International Trade Commission in recent years, final decisions coming from the commission since January 2019 have largely affirmed that complainants have satisfied the domestic industry (DI) requirement.

Going forward, parties litigating before the PTAB should consider the Fintiv factors comprehensively rather than zeroing-in on the procedural schedule in their parallel litigation. As the data suggests, an aggressive and fast-moving schedule alone may no longer result in a discretionary institution denial.