Inter Partes Review Proceedings

News & Analysis as of

PTAB Must Provide Explanation in Support of Conclusory Findings

Addressing the obligation of the Patent Trial and Appeal Board (PTAB or Board) to articulate “logical and rational” reasons for its conclusions, the US Court of Appeals for the Federal Circuit remanded a portion of a PTAB...more

Patent Rights in the U.S.: Is the Pendulum Finally Swinging Back to Center?

The U.S. patent system has long struggled to strike a balance that both encourages patent rights and prevents patent abuse. Finding that balance requires giving patent owners the right amount of patent enforcement power,...more

Generalized Common Sense Allegations Cannot Be Used to Supply Important Missing Claim Limitation

Addressing the use of common sense for an obviousness analysis, the US Court of Appeals for the Federal Circuit held that conclusory statements about common sense cannot be used to supply missing claim limitations that play a...more

PTAB Life Sciences Report - September 2016 #2

About the PTAB Life Sciences Report: Each week we will report on recent developments at the PTAB involving life sciences patents. Medtronic Xomed, Inc. v. Neurovision Medical Products, Inc. - PTAB Petition: ...more

Federal Circuit Clarifies That It Still Lacks Jurisdiction To Review Whether Petition Was Time-Barred

A “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” 35 U.S.C. § 314(d). A series of decisions from the Federal Circuit have clarified to what...more

Post-Grant Patent Amendment – Canadian and US Options

On the long and sometimes bumpy road of patent prosecution, a Notice of Allowance can be a welcome sign that you are nearly at your destination: a granted patent. But the journey is not over yet. At the time of grant, what if...more

Preliminary Injunction Granted Due to Weakened Invalidity Defense in Light of Inter Partes Review Decision

A judge in the Northern District of California has enjoined a group of defendants from selling a laboratory DNA sequencing machine. The plaintiff first asserted the patent against one defendant in litigation in the District...more

District Court Denies Request to Preclude Defendant from Sharing Confidential Information of Plaintiff with PTAB as part of Inter...

In this patent infringement action between Ultratec and CaptionCall, CaptionCall filed a motion for relief from the stipulated protective order in order to use confidential commercial information from Ultratec (the...more

Federal Circuit Overturns PTAB Denial of Motion to Amend Claims in IPR Proceeding

Veritas Technologies LLC v. Veeam Software Corp., No. 2015-1894 (Fed. Cir. Aug. 30, 2016). On recurring controversy in AIA trials is the difficulty patent owners face meeting the PTAB’s strict requirements for amending...more

A legal look at Patent Trial and Appeal Board decisions and trends: Shaving Patents Avoid IPR by a Whisker

Inter Partes Review (IPR) proceedings are limited to prior art challenges for printed prior art. Although prior art typically includes drawings that illustrate physical structures, the description of those drawings may only...more

Four Years of IPRs: Lessons from Proceedings for the Cabilly II Patent

It has been four years since the first inter partes review proceedings were filed in the United States. The first IPR petition, filed on September 16, 2012 (the first day IPRs became available), made it all the way to the...more

PTAB Explains how to Determine Whether a Reference Qualifies as a “Printed Publication” Under 35 U.S.C. § 102(b)

In a final written decision issued on August 30, 2016, in an inter partes review, the Patent Trial and Appeal Board (PTAB) examined whether a “Request for Comments” (RFC) document qualified as a printed publication under 35...more

District Court Stays Litigation Pending Inter Partes Review ("IPR") over Defendant's Objection That Summary Judgment Motion Should...

After the Patent Trial and Appellate Board ("PTAB") instituted inter partes review ("IPR") of all asserted claims in three of the Patents-in-Suit and with the PTAB's decision on FMC's petition for IPR of the fourth challenged...more

Hospira Files a Petition for an IPR of Genentech’s Trastuzumab Patent

On September 16, Hospira filed a petition for an inter partes review of Genentech’s U.S. Patent No. 7,807,799 which is directed to methods of purifying proteins, including trastuzumab. Trastuzumab is marketed by Genentech...more

Federal Circuit Patent Updates - September 2016

Dynamic 3D Geosolutions LLC v. Schlumberger Limited (No. 2015-1628, 9/12/16) (Lourie, Wallach, Hughes) - Lourie, J. Affirming disqualification of plaintiff's counsel and affirming dismissal of complaint. “We recognize...more

“Cabilly” and Other Foundational Patents in Biologic Drug Production

As we previously reported, over the past year several petitions requesting Inter Partes Review (IPR) of patents that claim foundational inventions for biologic drug production were filed. Here we discuss the scope of two of...more

Federal Circuit: Go whole-hog on validity below if you want to contest an independent determination of invalidity on appeal

Think you’ve won on validity at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) and your claims are safe on appeal? “Not so fast,” says the Federal Circuit in Software Rights Archive, LLC v....more

A New Business Model: The IPR Troll

In my last post, I discussed new proceedings under the America Invents Act (AIA) of 2012 which a company can use to challenge third party patents. One of the more popular of these procedures is the Inter Partes Review (IPR)....more

Hospira Files an IPR Petition Challenging Genentech’s Bevacizumab Patent

On September 9, 2016, Hospira filed a petition for an IPR of U.S. Patent No. 7,622,115, owned by Genentech. The ‘115 patent claims methods of treating various cancers with bevacizumab, which is marketed by Genentech under...more

Board Institutes IPR of Genentech’s Cabilly Patent

On September 8, 2016, the Board instituted an IPR of U.S. Patent No. 6,331,415, one of the Cabilly patents owned by Genentech. The Petitioner in IPR2016-00710 is Mylan. The ’415 patent was the subject of two other IPRS that...more

IPR Update: Genentech Settles Two IPRs on Cabilly Patent

On September 2, 2016, the PTAB terminated IPR2015-01624 and IPR2016-00460, both of which challenged U.S. Patent No. 6,331,415, one of Genentech’s Cabilly patents. The Petitioners in those IPRs were Sanofi-Aventis and...more

PTAB Grants Patent Owner Motion to Request Certificate of Correction

Addressing the requirements for correcting a mistake in a patent undergoing inter partes review, the Patent Trial and Appeal Board (PTAB or Board) granted the patent owner’s motion requesting authorization to file a...more

“Providing . . . Information” to Medical Providers Is Not Given Patentable Weight

Addressing the application of the “printed matter” doctrine, the Patent Trial and Appeal Board (PTAB or Board) determined that claim elements directed to “providing [certain] information” fell within the doctrine and...more

Retroactive Estoppel: Acting as Real Party in Interest May Import Estoppel Effects from Earlier-Filed Petitions

In a decision that could significantly extend the estoppel effects of 35 USC § 315(e), the Patent Trial and Appeal Board (PTAB or Board) found that estoppel applies to all real parties in interest of an inter partes review...more

PTAB Reversed Based on Non-Analogous Art Theory

Although In re Natural Alternatives LLC (Fed. Cir. August 31, 2016) is not an IPR appeal, it should be of interest to those who care about IPRs and PGRs because it reflects a successful appeal from the Patent Trial & Appeal...more

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