PTAB authorizes patentee to file motion for sanctions against Bass for abuse of IPR

In this order in Coalition for Affordable Drugs v. Celgene, the PTAB authorized Celgene, the patentee, to file a motion for sanctions based upon the premise that the Coalition was using IPR to affect Celgene’s stock price, not for legitimate purposes. ¬†This is interesting, pitting lawyer’s obligations of competent and zealous representation and the First Amendment right to petition against the IPR scheme. ¬† Stay tuned to see, among other things, if the PTAB comes up with some federal patent law of abuse of process….

About David

Professor of Law, Mercer University School of Law. Formerly Of Counsel, Taylor English Duma, LLP and in 2012-13, judicial clerk to Chief Judge Rader.

4 thoughts on “PTAB authorizes patentee to file motion for sanctions against Bass for abuse of IPR

  1. 3

    David, there is a discussion over on Gene’s site discussing IPR trolls. In that discussion there a citation to a case where the Federal Circuit said that state law was unavailable as a basis for damages for abuse of process or malicious prosecution or the like in complaining about abuse of re-examination processes. The Federal Circuit case apparently said that when unethical conduct is involved in filing a re-examination, that the sole remedy is in the patent office.

    Now it seems to me that if the IPR, however legitimate it might be in terms of prior art analysis, is part and parcel of an illegal stock price manipulation scheme, that the patent office should not continence the IPR, but should debar every attorney involved in the case, dismiss the IPR, forward the information to the attorney general for prosecution, and award whatever sanctions are possible against the petitioner.

    1. 3.1

      Ned,

      I do not think that you read the case carefully enough as the jurisdiction question was between state and federal – and it was the patent holder who filed in state and then turned around and demanded the matter be a federal question.

      In all fairness, I don’t think Joe Allen characterized the case well either.

  2. 2

    I think that’s a good summary of the general protections the First Amendment gives to petitioning government — so long as non-frivolous, motivation doesn’t matter. You would think, too, that given the fact that Congress created IPR to help get rid of “bad patents,” that the threshold would have to be pretty high.

  3. 1

    Well, the Board hasn’t decided on the merits yet, but this sounds like a dubious claim to me. If the Board has power to sanction for frivolous actions and finds that the action is frivolous, then fine. The petitioner’s motivation for filing the IPR may or may not be (and is probably not) relevant to that determination, however. If it’s a non-frivolous challenge, and the challenger has standing under the law to file it, then who cares why it was filed?

Comments are closed.