PGR proceedings are only available for patents having an effective filing date on or after March 16, 2013. The following cases address issues of eligibility for post-grant review.
Inguran, LLC v. Premium Genetics (UK) Ltd., PGR2015-00017, Paper 8 (PTAB Dec. 22, 2015). Entitlement to the benefit of an earlier date under §§ 119, 120, 121, and 365 is premised on disclosure of the claimed invention in the manner provided by § 112(a) (other than the requirement to disclose the best mode) in the earlier application. Consequently, a patent that issues from an application filed after March 16, 2013, and that claims priority to an application filed before March 16, 2013, is available for post-grant review “if the patent contains . . . at least one claim that was not disclosed in compliance with the written description and enablement requirements of § 112(a) in the earlier application for which the benefit of an earlier filing date prior to March 16, 2013 was sought.”
US Endodontics, LLC v. Gold Standard Instruments, LLC, PGR2015-00019, Paper 17 (PTAB Jan. 29, 2016). The Board granted institution of a post-grant review of a patent under 35 U.S.C. §§ 112(a), 102 and 103, determining that the patent was subject to the first-inventor-to-file provisions of the AIA. Petitioner argued that the patent is eligible for post-grant review because claims in the application do not have written description support and are not enabled by the disclosure of earlier priority applications and thus are not entitled to the pre-AIA filing date of the earlier applications. The Board determined that petitioner met its burden to show that the patent is eligible for post-grant review because the priority applications of the patent do not provide an enabling disclosure for the challenged claims.
Dr. Reddy’s Labs., Ltd. v. Helsinn Healthcare S.A., PGR2016-00008, Paper 11 (PTAB Aug. 17, 2016). The Board denied institution on the grounds that petitioner did not provide a threshold showing that an alleged public sale was actually a public sale. Patent owner’s subsidiary entered into a supply and purchase agreement with a third party, in which the subsidiary and the third party would enter into an exclusive sales arrangement. Petitioner argued that the the agreement was made public through the third party’s SEC filings and through press releases prior to the critical date of the patent. The Board disagreed with petitioner’s arguments that the agreement was a public sale. The on-sale bar is not focused merely on whether a prior sale or offer for sale was made public. Rather, the sale itself was must make the claimed invention publicly available in order to trigger the on-sale bar. The supply and purchase agreement was subject to strict confidentiality requirements and was not a public sale.