#inter-partes-review-ipr

#inter-partes-review-ipr

To apply issue preclusion, courts generally require: (1) the issue was actually litigated and decided in the prior proceeding; (2) the determination was essential to the judgment; (3) the party against whom preclusion is asserted had a full and fair opportunity to litigate; and (4) the party against whom preclusion is asserted was a party (or in privity) in the prior proceeding.

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a pair of precedential decisions involving appeals from U.S. federal agency determinations on the patent rights of North Carolina-based energy demand response developer Causam Enterprises. The Federal Circuit affirmed the invalidation of Causam's patent rights and mooted further infringement proceedings after finding that inconsistent positions on patent ownership taken by respondent ecobee in alternative forums did not present a constitutional due process issue.

Bayer's U.S. Patent No. 10,828,310, which claims methods for reducing cardiovascular events in certain patients by administering specific doses of rivaroxaban (2.5 mg twice daily) and aspirin (75-100 mg daily) "in amounts that are clinically proven effective." Generic manufacturers Mylan, Teva, and Invagen successfully challenged the patent in IPR proceedings - finding the claim term non-limiting. The Federal Circuit agreed that the term did not provide patentable weight - but through a different analytical path.

This week, U.S. Patent and Trademark Office (USPTO) Acting Director Coke Morgan Stewart posted another round of Director Discretionary Denial decisions to the PTAB Decisions page, almost all of which denied institution to America Invents Acts (AIA) patent validity trials. Stewart's recent rulings generally confirm the trend so far that a patent owner's settled expectations with respect to patents that have been in force for six years or more hold significant weight, although in two cases this trend was bucked.