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Federal Circuit Swats Appeal in View of Patent Owner Failures

In the recent decision in Securus Technologies, Inc. v. Global Tel*Link Corporation, the Court of Appeals for the Federal Circuit (CAFC) addressed a number of issues, a couple of which are worth noting as potential pitfalls...more

Wasica Decision Reinforces Federal Circuit Guidance on Claim Construction

The Federal Circuit’s recent decision in Wasica Finance v. Continental Automotive Systems touched on a number of well-worn patent issues, but this article focuses on a few key claim construction principles discussed by the...more

Novartis v. Noven: The PTAB is not Bound by Prior Decisions of District Courts

Novartis, together with LTS Lohmann Therapie-Systeme, owns a pair of patents covering rivastigmine transdermal patches. These patches are useful for treating Alzheimer’s disease. Noven Pharmaceuticals filed an abbreviated new...more

Federal Circuit is No Place to Make New Claim Construction Arguments

The Federal Circuit has consistently made clear that arguments not first made to the PTAB will not be considered on appeal. Google fell victim to this well-worn concept in Google Inc. v. SimpleAir, Inc., 2016-1901 (CAFC March...more

Patentee’s Teaching Away Argument Fails to Overcome Substantial Evidence of Unpatentability

An obviousness challenge can be overcome by showing the prior art teaches away from the claimed invention. However, “teaching away” is a question of fact and thus subject to the substantial evidence standard in appeals from...more

Federal Circuit to Reconsider Achates Decision en banc

The Federal Circuit is set to reconsider one of its more controversial decisions en banc, when it decides whether the Achates Reference Publishing, Inc. v. Apple Inc. decision was correctly decided. Specifically, in Wi-Fi...more

IPR Estoppel Narrowed Even Further in D. Delaware Ruling

Despite the astounding success for patent challengers to date in IPR proceedings, are you one who has been worried about the effects of the IPR estoppel in future litigation? Has this concern dissuaded you from considering...more

Unreasonable Claim Construction Causes PTAB Reversal

In a fairly case-specific claim construction analysis, the Federal Circuit reversed the PTAB recently in D’Agostino v. Mastercard, Int’l, 2016-1592, -1593 (Fed. Cir. Dec. 12, 2016), finding that the Board erred in determining...more

Federal Circuit Weighs in on Evidentiary Challenge in IPR, Reversing PTAB

More often than not, evidentiary issues in IPR proceedings fail to make headlines because the Board will structure its Final Written Decision to avoid evidentiary challenges. Findings that a party’s motion to exclude is...more

45 Months of Inter Partes Review – By the Numbers (Volume 14)

Welcome to Harness Dickey’s Report on Litigation Practice before the United States Patent Office. Created by the America Invents Act, Inter Partes Review proceedings have already changed the face of patent litigation. Lower...more

First PGR Final Written Decisions – Look a Lot Like IPR/CBM Decisions

Despite the overwhelming popularity of IPR proceedings since their inception, about three and a half years ago, Post Grant Review has, to date, been little used. There are probably valid reasons for this low popularity,...more

PTAB Designates Five Decisions as Precedential

To date, the PTAB has been stingy in its designation of panel decisions as “precedential.” Indeed, before now, only 3 decisions in the AIA era had been designated as precedential. That number increased dramatically on May 10,...more

Federal Circuit Maintains “Substantial Evidence” Standard of Review in AIA Post Grant Proceedings

On April 26, 2016, the Federal Circuit denied a petition seeking rehearing en banc of its application of the “substantial evidence” standard of review in post-grant administrative proceedings, in the case of Merck & Cie v....more

Supreme Court Hears Arguments in Cuozzo Case

We should soon find out whether the Federal Circuit will again face reversal at the hands of the Supreme Court in a patent case. On April 25, 2016, the Court heard oral arguments in the case of In re Cuozzo, the first IPR...more

PTO Issues Final Rule Changes to IPR Proceedings

The PTO issued its long-anticipated rule changes for IPR and PGR proceedings. These rules follow up on immediate changes to the rules that were implemented about a year ago. Generally considered pro-Patent Owner changes to...more

Federal Circuit Reverses Because PTAB Relied Upon Argument First Raised at Oral Argument

In a decision today from the Federal Circuit, in Dell Inc. v. Acceleron, LLC, 2015-1513, -1514 (March 15, 2016), involving US Patent No. 6,948,021, the PTAB was reversed because its Final Written Decision relied upon a new...more

39 Months of Inter Partes Review – By the Numbers

Welcome to the 12th volume of our IPR-PGR Report, reporting on the statistics that underlie Inter Partes Review and Post Grant Review proceedings. This quarter marked the second in a row in which the number of IPR filings per...more

Federal Circuit Explores Expert Declaration as IPR Supplemental Evidence

Getting caught up on a Federal Circuit decision from late last year, we take a look at the Federal Circuit’s decision in Redline Detection, LLC v. Star Environtech, Inc. (2015-1047), decided on December 31, 2015. In this...more

Board Explains the Process for Evidentiary Objections—and Illustrates the Severe Penalty for Not Following It

Practitioners who are used to district court litigation may be surprised—and tripped up—by the rules for objecting to evidence in IPRs, which differ significantly from the approach used in litigation. The Board’s Final...more

BioPharma Patents: Quick Tips & News - January 2016

Subject matter eligibility and “laws of nature.” As reported in our July 2015 newsletter, the Federal Circuit invalidated claims to a method of diagnosing fetal abnormalities without amniocentesis. This precedent—if it...more

Federal Circuit Issues Ironic Decision Reversing PTAB For Not Providing Enough Analysis

The PTAB was rebuked by the Federal Circuit on January 22nd for failing to provide an adequate description of its reasoning for finding the claims of the challenged patent obvious in an inter partes review proceeding. In...more

“Obvious to Try” Rationale Insufficient to Institute IPR Trial Directed to Venlafaxine

The rate at which the Board denies inter partes review petitions has been climbing in recent months, and will be helped along by the Board’s denial of review in Neptune Generics v. Auspex Pharm., IPR2015-01313. Neptune...more

PTAB Rejects Challenge to Onglyza® Patent

The lower burden of proof associated with inter partes reviews should make IPRs attractive to generic pharmaceutical companies, but even with that lower burden, success is not guaranteed, as illustrated by IPR2015-01340. ...more

Federal Circuit Addresses Substantial Evidence as Standard of Review in IPR

In June, 2014, the PTAB declared all challenged claims in two IPR trials brought by Gnosis S.p.A. to be unpatentable based on obviousness grounds. Gnosis S.p.A. v. S. Ala. Medical Science Found., IPR2013-00116 and Gnosis...more

The PTAB Can Institute Post Grant Trial on a Legal Ground Not Raised in the Petition

In In re Cuozzo Speed Tech., the patentee tried (and failed) to challenge the Board’s decision to institute an IPR on the basis of a combination of references that the petitioner had never suggested. However, even in Cuozzo...more

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