News & Analysis as of

Intellectual Property Administrative Agency

Read Intellectual Property Law updates, alerts, news, and legal analysis from leading lawyers and law firms:

IPR Estoppel: Ripe for Gamesmanship?

In Douglas Dynamics LLC, v. Meyer Products LLC, [14-cv-886-jdp] (D. Wisc. Document # 68 April 18. 2017), the district court considered the scope of estoppel after an Inter Partes Review (IPR). The Court identified three...more

PTAB Weighs Five Factors in Discretionary Denial of Xactware’s Second IPR Petition

The PTAB weighed five factors in its discretionary denial of a second IPR petition filed by the same petitioner in Xactware Solutions, Inc. v. Eagle View Tech., Inc., IPR2017-00034, Paper 9 (P.T.A.B. April 13, 2017)....more

Pharmaceutical Compound Nonobvious Absent Evidence Suggesting Specific Modification to Prior Art Compound

by Jones Day on

The PTAB issued a final written decision in IPR2016-00204, upholding the validity of claims 1–13 of Patent RE38,551 E (“the ’551 patent”), which covers the antiepileptic drug VIMPAT® (lacosamide)....more

Fed Circ Affirms Conflicting Invalidity Determinations from District Court and PTAB

by Jones Day on

As we have previously discussed on this blog, when considering an issue of patentability such as definiteness under section 112, the PTAB and a district court may properly reach opposite conclusions. In Tinnus Enterprises LLC...more

Federal Circuit Reverses-in-Part PTAB’s IPR Decisions for Wasica’s Tire Pressure Monitoring Patents

The Federal Circuit affirmed-in-part and reversed-in-part the PTAB’s final written decisions on Wasica’s tire pressure monitoring patents in Wasica Finance GmbH v. Continental Automotive Sys., Inc., No. 2015-2078 (Fed. Cir....more

"Strategies for Litigants in Patent Infringement Cases Using Motions to Dismiss Post-Alice"

Nearly three years have passed since the U.S. Supreme Court's decision on patent eligibility in Alice Corp. Pty. Ltd. v. CLS Bank Int'l. The decision, which ushered in an unprecedented wave of cases invalidating...more

Federal Circuit Affirms PTAB’s Obviousness Holding for Novartis’s Dementia Drug Patents

The Federal Circuit affirmed the PTAB’s final written decisions holding that claims directed to Novartis’s dementia drug compositions containing Exelon were obvious in Novartis AG v. Noven Pharm. Inc., No. 2016-1679 (Fed....more

USPTO Launches PTAB Procedural Reform Initiative

On April 7, 2017, the U.S. Patent and Trademark Office (USPTO) announced it has launched an initiative to develop ways to improve Patent Trial and Appeal Board (PTAB) proceedings, particularly inter partes review proceedings....more

PTAB Denies Institution of Petitioner’s Second IPR Based on Newly Cited Prior Art Because Petitioner Knew of the Prior Art Before...

On March 20, 2017, a Patent Trial and Appeal Board (PTAB) panel declined to institute an inter partes review (IPR) of patent claims that were also the subject of a previously filed IPR by the same petitioner (IBM). IBM...more

Federal Circuit Affirms Obviousness of Novartis’s Patent for Multiple Sclerosis Drug

The Federal Circuit affirmed the PTAB’s final written decision holding that claims directed to Novartis’s multiple sclerosis drug Gilenya were obvious in Novartis AG v. Torrent Pharmaceuticals. Ltd., No. 2016-1352 (Fed. Cir....more

Antedating References at PTAB: Trends and Pitfalls

Patent owners generally face unfavorable odds in attempting to antedate references in America Invents Act trials, including inter partes review proceedings. Oftentimes, Patent Trial and Appeal Board decisions concerning...more

Federal Circuit PTAB Appeal Statistics – April 2017

by Finnegan – AIA Blog on

Through April 1, 2017, the Federal Circuit decided 185 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 142 (76.76%) cases, and reversed or vacated the PTAB on every issue in 16 (8.65%)...more

ITC Judge Takes Notice of PTAB Institution Denials

by Jones Day on

PTAB trials are nearly always (~ 4 out of 5) driven by some concurrent litigation need, either a district court complaint of infringement filed against the petitioner or an International Trade Commission (ITC) investigation...more

The Importance of Aligning Your Regulatory and IP Strategies

by Mark Mansour on

One of the least discussed but potentially most important part of the drug and device approval process is the smooth functioning of the IP and the regulatory strategies. It is natural to focus first on the IP issues,...more

Can PTAB Decision Not to Institute IPR Tank Invalidity Defense In ITC?

by Jones Day on

Judge McNamara determined to reopen the record after the hearing and take judicial notice of two PTAB decisions denying institution of IPR challenges of the asserted patents in Certain Composite Aerogel Insulation Materials...more

USPTO Seeking Potential Reforms to PTAB Proceedings

by Brinks Gilson & Lione on

On April 7, the U.S. Patent and Trademark Office (“USPTO”) announced its PTAB Procedural Reform Initiative. Patent Trial and Appeal Board (“PTAB”) proceedings created under the America Invents Act (“AIA”) have been in...more

Ericsson Tests Scope of the PTAB’s Sovereign Immunity Holding

On January 25, 2017, a panel of the Patent Trial and Appeal Board (PTAB) held that “Eleventh Amendment Immunity bars the institution of an inter partes review against an unconsenting state that has not waived sovereign...more

Just Because the Board Didn’t Say It, Doesn’t Mean that the Board Didn’t Think It

In Novartis AG v. Torrent Pharmaceuticals Limited, [2016-1352] (April 12, 2017), the Federal Circuit affirmed the PTAB’s determination that the challenged claims of U.S. Patent No. 8,324,283, and Novartis’ proposed substitute...more

When is a Missing Feature Not There?

TDY industries received a patent (US 7,244,519) for a cutting tool with a binder comprising ruthenium and a physical vapor deposition (PVD) coating. TDY then sued Ingersoll Cutting Tool Co. for infringement of the ‘519 patent...more

Don’t Exalt Slogans over Real Meaning; Find the Claim Construction that Naturally Aligns with the Specification and Prosecution...

In The Medicines Company v. Mylan, Inc., [2015-1113, 2015-1151, 2015-1181] (April 6, 2017), the Federal Circuit affirmed summary judgment of non-infringement of U.S. Patent No. 7,598,343, and reversed a bench trial...more

Evidence of Priority to Provisional Application and that Prior Art Was Not Work of Another Defeated Obviousness Challenge in IPR

The Patent Trial and Appeal Board (the “Board”) issued a final written decision determining that the Coalition for Affordable Drugs (ADROCA), LLC (“Petitioner”) failed to prove unpatentable claims 1-52 of U.S. Patent No....more

Beware Of Relying on Your Confidential Information

by Jones Day on

If you are involved in an IPR and you are contemplating whether to rely on your own confidential information as part of a filing, you need to consider the risk that the Board will deny your motion to file under seal because...more

Federal Circuit Limits Claim to Single Embodiment Because Only Enabling Description Provided in the Patent

On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court’s judgment of infringement and summary judgment for non-infringement of The Medicines Company’s (“MedCo”) patents-in-suit. See The...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

PTAB Not Bound By Prior Court Decisions Upholding Exelon Patents

by Foley & Lardner LLP on

In Novartis v. Noven Pharmaceuticals, Inc., the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board (PTAB) decisions invalidating certain claims of two Orange Book-listed Exelon patents. This decision has...more

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