PTAB Sanctions Patent Owner for Abusing IPR Process, Cancels All Claims Challenged by COVID Testing Device Maker

“The PTAB’s Sanctions Order explained that Longhorn improperly ignored the Board’s alternative claim constructions discussed in the institution decisions, thereby limiting the scope of its ‘obligatory disclosures to the Office and Petitioner.'” U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB) yesterday made public a Sanctions Order against a patent owner that resulted in the cancellation of all 183 claims of five patents challenged in separate inter partes review (IPR) proceedings. The PTAB order said that Longhorn Vaccines & Diagnostics “committed an egregious abuse of the PTAB process” by “selectively and improperly” withholding “material results that were inconsistent with its arguments and the patentability of both original and proposed substitute claims.”

The PTAB issued the Final Written Decisions in IPR2021-00847 (Patent 8,084,443 B2); IPR2021-00850 (Patent 8,293,467 B2); IPR2021-00854 (Patent 8,669,240 B2); IPR2021-00857 (Patent 9,212,399 B2); and IPR2021-00860 (Patent 9,683,256 B2), as well as contemporaneous Sanctions Orders, on May 3 to the Board and Parties, but gave Longhorn the opportunity to redact portions of the Order relevant to its potential appeal to the U.S. Court of Appeals for the Federal Circuit. The redacted Order became available to the public on May 22.

In the Order, the PTAB said Longhorn’s behavior was inconsistent with the duty of candor and fair dealing and thus issued an adverse judgment as to all of the challenged claims as sanctions, and also denied Longhorn’s revised motions to amend.

The IPRs were brought by Spectrum Solutions, LLC, who challenged certain claims of five of Longhorn’s patents on a type of biological testing method that Longhorn said Spectrum’s whole saliva collection device for COVID-19 testing infringed. According to a press release from Spectrum’s counsel, Knobbe Martens, Spectrum’s test was “the first product granted Emergency Use Authorization by the Food and Drug Administration for the collection of samples for RT-PCR Covid testing.”

The PTAB’s Sanctions Order explained that Longhorn improperly ignored the Board’s alternative claim constructions discussed in the institution decisions, thereby limiting the scope of its “obligatory disclosures to the Office and Petitioner, omitting data and information it should have disclosed under the duty of candor and fair dealing.”

Administrative Patent Judge (APJ) Georgianna Braden issued a concurrence in the Sanctions Order explaining that she would have awarded Spectrum compensatory expenses, including attorney fees. The majority concluded that an award of attorney fees on its own “is neither sufficient, nor necessary to protect the interests of the PTO and the public,” and, having already imposed sanctions in the form of cancellation of all claims, thus determined it was an unnecessary additional sanction.

But APJ Braden said whether attorney fees would serve to protect the interests of the USPTO and the public or not, or whether such fees would be a sufficient deterrent to future parties, was irrelevant. “The imposition of adverse judgment and a denial of Patent Owner’s motions to amend in each proceeding may well act to protect the agency and public’s interest as well
as to stand as a deterrent to other similarly situated parties,” Braden said. She continued:

“Under the circumstances of the present case, however, ordering Patent Owner to pay Petitioner’s attorney fees and laboratory costs associated with countering Patent Owner’s egregious and willful actions would serve, first, as a compounding sanction hand-in-hand with adverse judgment against Patent Owner in order to prevent a gross injustice to Petitioner. And, second, would compensate and make Petitioner whole for the time and money it spent addressing incomplete laboratory data and test results, incorrect deposition testimony, and knowingly false attorney arguments.”

On the merits, the PTAB found all of the challenged claims unpatentable in IPR2021-00847, IPR2021-00854 and IPR2021-00857; and some of the challenged claims unpatentable in IPR2021-00850 and IPR2021-00860. But due to the adverse judgment and sanctions, all of the challenged claims were cancelled.

According to Knobbe Martens, this is an “unprecedented move” by the PTAB, marking “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 before [the PTAB].’”

IPWatchdog reached out to Longhorn’s counsel for comment but had not received a response as of the time of publication.

Image Source: Deposit Photos
Image ID:55946639


Warning & Disclaimer: The pages, articles and comments on do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of

Join the Discussion

5 comments so far.

  • [Avatar for Patent Investor]
    Patent Investor
    June 5, 2023 06:27 pm

    VirnetX vs Apple (already time-barred)/RPX

    VirnetX lawyer: Apple and RPX are in cahoots.
    Apple lawyer: Not us!!!! (Gasps in shock)
    RPX lawyer: We’d never think of it (almost apoplectic)
    VirnetX lawyer: All of these documents submitted by RPX have metadata that shows it was created by Apple.
    PTAB panel: (Yawn). Finds Apple was RPI and dismisses IPRs.

    VirnetX vs. Apple (still time-barred)/RPX/Mangrove Partners

    VirnetX lawyer: RPX and Mangrove are in cahoots.
    Mangrove lawyer: We’d never think of it (almost apoplectic).
    RPX lawyer: Wait? Mangrove who????????
    VirnetX lawyer: Mangrove owns more than 5% of RPX stock under less than clear circumstances.
    PTAB Panel: No discovery
    CAFC: Yes. Discovery
    PTAB Panel: Ok, discovery (extremely limited)…(yawn)…No collusion proved by (extremely limited) discovery. Patents invalid as anticipated.
    CAFC: Final Written Decision utterly confusing and unintelligible. Go ahead and try it again, this time using obviousness.
    PTAB Panel: Do you believe it? We found it invalid due to obviousness.
    CAFC: GLORY BE!!!! Let’s moot the $500+ million jury verdict too!!!!

  • [Avatar for Josh Malone]
    Josh Malone
    May 24, 2023 02:56 pm

    PTAB is a cancer on the USA.

  • [Avatar for jacek]
    May 24, 2023 11:53 am

    Guys. Behave. The primadonna shows her claws. They will slap you for jaywalking with a cancellation of your claims, and they will take your vacation away.
    PTAB is a joke. What mine or your misbehavior has to do with any legal issues?
    Are they going to discipline me, too, for writing this comment?

    By the way. Since Scotus in the Oil States assures us that Inventor is not the owner of the “US patent” but the US government,
    I think the PTAB charades and Invalidations are not legally binding since the “Owner” (US government) was never officially served to attend the PTAB “Trials.”
    This is like suing the leaseholder for title to a house they are renting instead of the rightful owner.
    All of this is beyond a joke.

  • [Avatar for Francis G. Rushford]
    Francis G. Rushford
    May 24, 2023 07:56 am

    God forbid a petitioner filing multiple baseless petitions would be sanctioned. What would PTAB? Validate already valid patents?

  • [Avatar for Pro Say]
    Pro Say
    May 23, 2023 05:30 pm

    “PTAB Sanctions Patent Owner for Abusing IPR Process”

    And yet, no sanctions for petitioners — including related and “secret (e.g., United Patents)” petitioners — for repeated and multiple attacks on the same patent/s?

    Why is what’s good for the goose not also good for the gander?