News & Analysis as of

Patent Trial and Appeal Board

Novartis AG, LTS et al. v. Noven Pharmaceuticals, Inc. – Prior Judicial Opinions Don’t Bind the PTAB

After Novartis’ patents were found nonobvious by the Fed. Cir., affirming the Delaware District Court, defendant Noven filed for inter partes review (IPR) of U.S. Pat. Nos. 6316023 and 6335031, on rivastigmine and an...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 Life Sciences Report -- Part II - April 2017#2

About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Actavis Laboratories FL, Inc. et al. v Janssen Oncology, Inc. PTAB Petition: IPR2017-00853;...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

Novartis AG v. Torrent Pharmaceuticals Ltd. (Fed. Cir. 2017)

Can a prior art reference that does not contain a teaching sufficient enough to allow it to be used in an obviousness combination nevertheless be used as a background reference for evidence of motivation to combine? ...more

SAS Urges High Court to Restore Balance to AIA Post-Grant Framework

by Jones Day on

Who makes the country’s patent laws—Congress, or the Patent Office? A recent petition for certiorari filed by SAS Institute, Inc.—represented by a team of Jones Day lawyers—asks the Supreme Court to decide that question in...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

Different Burdens of Proof and Different Records Allowed Different Conclusions on Validity by the PTAB and District Court

In Novartis AG v. Noven Pharmaceuticals Inc., Nos. 16-1678, -1679 (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed the PTAB’s decisions finding obvious certain patents that were previously found nonobvious in district...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 Life Sciences Report -- Part I - April 2017#2

About the PTAB Life Sciences Report: Each month we will report on developments at the PTAB involving life sciences patents. Reckitt Benckiser LLC v. Ansell Healthcare Products LLC - PTAB Petition: IPR2017-00063; filed...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

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

University of California/Berkeley Appeals Adverse CRISPR Decision by PTAB

In February, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office rendered judgment that there was no interference-in-fact between the claims in interference between the Regents of the University...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

Are the Tides Turning for Motions to Amend Claims in IPR Proceedings?

by Weintraub Tobin on

The Patent Trial and Appeal Board (“PTAB”) has rarely allowed patent owners to replace or modify claims during inter partes review (“IPR”), covered business method review, or post-grant review. In fact, in April 2016 the...more

Anticipation Law Does Not Permit Finding Missing Claim Elements Based Only on Artisans “Immediately Envisioning Them”

The recent Federal Circuit decision, Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd. et al., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), explained the anticipation teachings of earlier precedent and unanimously...more

1,682 Results
|
View per page
Page: of 68
Cybersecurity

"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!