Law360, National Law Review Report on Another “First” for Wolf Greenfield’s Post-Grant Group

On January 25, 2017, the Patent Trial and Appeal Board (PTAB) dismissed three inter partes review (IPR) petitions filed against Wolf Greenfield client the University of Florida Research Foundation (UFRF). The PTAB found that UFRF is an arm of the state of Florida entitled to sovereign immunity and therefore cannot be subject to IPRs involuntarily. The PTAB’s decision is a significant one for UFRF, and could protect other state universities and related entities from IPRs. Law360 called the decision “a win for state universities,” and The National Law Review said that “the defense of sovereign immunity is a powerful tool for public universities or other state entities to use in defending against an IPR.”

This was the first time the PTAB had ever been asked to address this issue. While state universities had previously had patents challenged before the PTAB, no party had ever asserted that sovereign immunity rendered a state entity immune from those challenges.

These wins continue our Post-Grant Proceedings Group’s outstanding track record of success for both patent owners and petitioners, and cap off a stellar 2016. The PTAB has been a very favorable forum for those challenging patents, as it institutes trials on about 70% of all challenges. Wolf Greenfield’s patent owner clients have fared far better—of the 11 petitions filed against our patent owner clients in 2016 that the PTAB has ruled on, 10 were denied or dismissed. Conversely, the PTAB ruled on 25 petitions for Wolf Greenfield clients challenging patents in 2016 and granted institution on 100% of those petitions.

This is also the latest in a series of “firsts” Wolf Greenfield has achieved on behalf of our clients, including:

  • First-ever PTAB grant of attorneys’ fees: The PTAB granted a motion for attorneys’ fees filed by Wolf Greenfield client RPX, a leading provider of patent risk solutions, in three IPR proceedings in which RPX challenged patents owned and asserted by a non-practicing entity (NPE). This unprecedented attorneys’ fees award followed the Board’s granting of RPX’s motion for sanctions against the NPE for protective order violations. In addition to attorneys’ fees, the Board also granted RPX’s request for other types of sanctions, and in late 2016 issued final written decisions cancelling all challenged claims. (IPR2015-01750, IPR2015-01751, IPR2015-01752)
  • First-ever PTAB win on secondary considerations: Wolf Greenfield client Saint-Gobain won confirmation of all claims in its patent, marking a rare instance (less than 15% chance) of a patent surviving an AIA review unscathed. In finding the claims nonobvious, the PTAB relied upon the evidentiary record Saint-Gobain was able to develop demonstrating commercial success of the invention. (IPR2014-00309)
  • First-ever pre-institution deposition of a non-declarant: While defending four EMC patents in IPRs, the PTAB granted a pre-institution deposition of the petitioner’s CEO on the question of whether the petitions properly named all real parties in interest. The PTAB had never previously granted a pre-institution deposition of a non-declarant. The deposition testimony proved useful in persuading the PTAB that the petitions failed to identify all real parties in interest, resulting in the PTAB denying institution on all four petitions. (IPR2014-01295, IPR2014-01254, IPR2014-01329, IPR2014-01332)
Members of the firm’s Post-Grant Proceedings Group blog regularly at The Post-Grant Strategist. If you have any questions or would like to discuss your post-grant strategy, please contact Rich Giunta at Rich.Giunta@WolfGreenfield.com.