News & Analysis as of

Intellectual Property Administrative Agency

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

Novartis’ Gilenya Patent Invalidated as Obvious

On April 12, 2017, the Federal Circuit affirmed the determination by the US Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (Board) that the claims of U.S. Patent No. 8,324,283 (“the ’283 patent”) were...more

Federal Circuit to PTAB: No Short Cuts Allowed

Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data...more

USPTO Invites Suggestions for PTAB Procedural Reform Initiative

by Jones Day on

The Patent Office has announced an initiative to make procedural reforms in an effort to improve PTAB trial proceedings, particularly inter partes review proceedings...more

Analogous Analysis: A Survey of Recent PTAB Decisions Establishing Subject Matter Patent Eligibility

In 2014, the U.S. Supreme Court established the current framework for determining patent-eligible subject matter in Alice. The Alice framework is a two-part test, with step one requiring a determination regarding whether a...more

No Nexus For Novartis Gilenya Patent

by Foley & Lardner LLP on

In Novartis AG v. Torrent Pharmaceuticals Ltd., the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) invalidating all claims of U.S. Patent 8,324,283, which is one of four Orange...more

PTAB Denies Petitioner’s Second IPR Because Petitioner Strategically Delayed Filing to Take Advantage of Feedback from PTAB on...

On April 13, 2017, a Patent Trial and Appeal Board (PTAB) panel denied institution of inter partes review (IPR) of patent claims that were the subject of a previously filed IPR by the same petitioner. The panel found that the...more

PTAB Grants-in-Part Motions to Amend in Three Related IPRs

The PTAB granted-in-part motions to amend in three related proceedings: Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2015-01953, Paper 107 (P.T.A.B. sealed on March 23, 2017, made public on April 19, 2017);...more

PTAB's Decision Not To Institute IPR Is Relevant In A Co-Pending ITC Investigation

by Brinks Gilson & Lione on

ITC complainant Aspen Aerogels, Inc. (“Aspen”) filed on March 24, 2017 a motion and supporting memorandum to reopen proceedings for receipt of additional evidence. In the Matter of: Certain Composite Aerogel Insulation...more

Can Renting Be a Sale After Importation?

by Jones Day on

We previously wrote about the ITC’s determination in Certain Semiconductor Devices, Semiconductor Device Packages, and Products Containing the Same, Inv. No. 337-TA-1010 that renting accused products after importation does...more

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

1,823 Results
|
View per page
Page: of 73
Cybersecurity

Follow Intellectual Property Updates on:

"My best business intelligence,
in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.

Feedback? Tell us what you think of the new jdsupra.com!