Patent Trial and Appeal Board

News & Analysis as of

Substantial Evidence Supports Determination of Reasonable Expectation of Success

In In re Efthymiopoulos, [2016-1003] (October 18, 2016) the Federal Circuit affirmed the PTAB decision that the claimed invention relating to the administration or an anti-influeza drug “by inhalation through the mouth alone”...more

PTAB Decision To Terminate IPR Proceedings After Institution Is Not Appealable

Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., No. 2015-1977 (Fed. Cir. Oct. 20, 2016) - Applying the Supreme Court’s interpretation of the AIA’s provision making inter partes review institution decisions...more

Biogen Dodges IPR Bullet on Key Tysabri® Patents

On Monday, the PTAB issued its ruling denying institution of three IPRs challenging Biogen’s patents claiming formulations and methods of treatment using natalizumab. Specifically, the PTAB denied institution of...more

PTAB Denies Institution on Biogen’s Tysabri® Patent

On October 17, the PTAB denied institution of IPR2016-000912, IPR2016-00915, IPR2016-00916. The Petitions in these cases were filed by Swiss Pharma International AG on U.S. Patent Nos. 8,815,236; 8,349,321; and 8,900,577,...more

PTAB Upholds Lialda Patent Over Kyle Bass IPR Challenge

The USPTO Patent Trial and Appeal Board (PTAB) has issued a final written decision upholding Shire’s Lialda® patent over the Inter Partes Review (IPR) challenge brought by Kyle Bass and his Coalition for Affordable Drugs. The...more

The Supreme Court’s Decisions Not to Hear Patent Cases Leaves Federal Circuit Decisions on Key Questions Intact

The Supreme Court recently declined to hear several patent cases, thus leaving the decisions by the Federal Circuit intact. Issues that were not taken up by the Supreme Court include (1) whether performing patented methods...more

Purported Public Interest Group Challenges Drug Patent in Qui Tam Action

The intersection of patent law, drug regulations, creative lawyering, and commerce (if not outright greed) has once again arisen in a qui tam suit brought under 31 U.S.C. §§ 3729–3733 (alleging fraud against the U.S....more

PTAB – The Most Active Forum Once Again

In 2014, The Patent Trial and Appeal Board (PTAB) had a record breaking year in terms of activity, surpassing the second most active court by 16%. While the PTAB and district courts continue to see a decrease in filings...more

Bass IPR Petition Against Shire Fails

On October 5, the PTAB ruled against Petitioner Coalition for Affordable Drugs II LLC, an organization formed by hedge fund manager Kyle Bass, holding that the petitioner had not shown by a preponderance of the evidence that...more

PTAB Rejects Consideration of New Issues on Remand

Addressing the scope of a remand from the US Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board (PTAB or Board) declined to consider evidence and arguments presented for the first time on remand....more

Sovereign Immunity of State Universities: Can It Shield Them from AIA Patent Challenges?

In what appears to be a case of first impression, the PTAB is poised to rule on the question of whether state sovereign immunity prevents an IPR challenge from being maintained against a University of Florida (“UF”) patent...more

Incomplete Preemption Does Not Result in Patent-Eligible Subject Matter

In a final written decision of a covered business method (CBM) patent review, the Patent Trial and Appeal Board (PTAB or Board) found the challenged claims unpatentable on multiple grounds and clarified that, for the purpose...more

A GUI Situation for CBM

Addressing the issue of subject matter eligibility for covered business method (CBM) patent jurisdiction under § 18(d)(1) of the America Invents Act (AIA), the Patent Trial and Appeal Board (PTAB or Board) instituted CBM...more

Post-Grant Review May Be Used to Invalidate Patents Directed to Patent-Ineligible Subject Matter

Addressing patent-eligible subject matter issues, the Patent Trial and Appeal Board (PTAB or Board) issued a final written decision in a post-grant review (PGR) finding all claims of a newly issued patent unpatentable under...more

Federal Circuit Rules the Patent Trial and Appeal Board Can Consider New Evidence During AIA Review Trial

On September 26, 2016, the U.S. Court of Appeals for the Federal Circuit declined to review in a unanimous en banc decision a panel Federal Circuit decision affirming that the Patent Trial and Appeal Board (the “Board”) at...more

CBM Review Denied for Technological Invention Directed to Financial Product **WEB ONLY**

The Patent Trial and Appeal Board (PTAB or Board) may deny covered business method (CBM) review if the challenged patent is for a technological invention, even if it is directed at a financial product or service. Sally Beauty...more

PTO Must Apply Phillips Standard when Construing Expired Patents **WEB ONLY**

In an opinion addressing the standard for claim construction of a patent that expires during reexamination, the US Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB’s or Board’s)...more

Bass’s First IPR Decision Rendered – Victory for Patent Owner, Shire Lpc

If Kyle Bass’s Coalition for Affordable Drugs Series II hedge fund was hoping to reap a windfall from short positions in Shire Plc’s stock this week, it was dealt a major setback by a Patent Trial and Appeal Board (PTAB)...more

Federal Circuit Review | September 2016

Claims Directed to Monitoring and Analyzing Data Held to Be Invalid under § 101 - In Electric Power Group, LLC v. Alstom S.A., Appeal No. 2015-1778, the Federal Circuit upheld the district court’s grant of summary...more

Publications Must Be Accessible to Persons of Ordinary Skill

On Wednesday, September 7, the Patent Trial and Appeal Board found that U.S. Patent Nos. 7,670,358 and 7,776,072 were not obvious, in part because certain cited prior art was not “disseminated or otherwise made available...more

Inter Partes Review - Petitioner Estoppel under 35 U.S.C. §315(e)(1)

The Patent Trials and Appeals Board ruled that Petitioner could not maintain a subsequent proceeding with respect to the same claim on a ground that it “reasonably could have raised” in a prior proceeding despite Petitioner...more

Federal Circuit Panel Splits in Important Decision Regarding Its Jurisdiction over Institution of IPRs

In Husky Injection Molding Systems Ltd. v. Athena Automation Ltd., Appeal Nos. 2015-1726, 1727 (Sept. 23, 2016), the panel majority, consisting of Judges Lourie (the opinion’s author) and Stoll, differed sharply with...more

CAFC’s Husky Decision Makes Sledding Tougher for Patent Owners in PTAB Appeals

The Federal Circuit recently determined that it lacked jurisdiction to review the Patent Trial and Appeal Board’s determination that assignor estoppel has no affect in an inter partes review (“IPR”). The majority’s decision...more

PTAB Refusal to Permit Claim Amendments Remanded

Addressing the standard for granting a motion to amend claims in inter partes review (IPR), the US Court of Appeals for the Federal Circuit rejected a conclusion by the Patent Trial and Appeal Board (PTAB or Board) that the...more

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

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