An administrative tribunal at the US Patent and Trademark Office canceled five patents as a punishment after their owner, Longhorn Vaccines & Dignostics LLC, failed to disclose testing information to a company challenging the patents’ validity.
The board nixed all 183 claims from the five patents, in a ruling issued under seal on May 3 but made publicly available nearly three weeks later. The board separately issued five decisions on the merits of each patent, invalidating a combined 176 claims but indicating seven would’ve survived the challenges absent the sanctions order.
The Patent Trial and Appeal board wrote that by only divulging test results helpful to its litigation position and withholding results that could’ve hurt its case, Longhorn “acted deliberately in failing to comply with its duty of candor and good faith before the Board, that Patent Owner’s behavior was egregious.”
The dispute stems from a November 2020 lawsuit in which Longhorn alleged Spectrum Solutions LLC infringed the patents, along with a sixth. Spectrum responded by challenging their validity through inter partes review at the PTAB. The litigation was paused pending resolution of the PTAB challenges.
The patents cover chemical compositions for isolating nucleic acids in biological samples and methods for preserving those acids’ integrity.
The PTAB wrote that Longhorn contracted with Assured Bio Labs LLC to conduct biological testing to help counter Spectrum’s arguments that its patents were obvious in light of a chemical composition disclosed in a patent application submitted by a Canadian scientist.
But the tribunal said Longhorn “selectively and improperly withheld material results that were inconsistent with its arguments,” leading to the sanctions order.
Knobbe Martens, Olson & Bear LLP, the firm representing Spectrum, called the order “unprecedented” in a press statement.
“This marks the first time since Congress enacted the IPR process that the PTAB has cancelled all claims of a patent based on the patent owner’s ‘unwarranted disregard relating to its duty of disclosure and fair dealing,’” the firm wrote.
One of the PTAB judges indicated she would have imposed even stiffer sanctions on Longhorn. Patent Judge Georgianna W. Braden said in a concurrence she would’ve also required Longhorn to cover Spectrum’s expenses in the proceeding, including attorneys’ fees.
Longhorn said through a spokesperson that it “is reviewing its options with independent counsel.”
Stoel Rives LLP, one of the law firms representing Longhorn, separately responded through a spokesperson to say it was “disappointed by the board’s decision” and it stands “behind the work our lawyers did for our client.”
The board in November 2021 declined to institute IPR of the sixth Longhorn patent asserted in the Utah suit.
Knobbe Martens, Olson & Bear LLP represents Spectrum. Longhorn is represented by Stoel Rives LLP and Remenick PLLC.
The case is Spectrum Sols. LLC v. Longhorn Vaccines & Diagnostics, LLC, P.T.A.B., IPR2021-00847, -00850, -00854, -00857, -00860, granting mot. for sanctions 5/22/23.
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