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IPR Spotlight Series: What to Do When the PTAB Denies Your Petition to Institute IPR

Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became available on September 16, 2012 as a post-grant review procedure to challenge the patentability of issued claims based on prior art patents and...more

Allergan, Inc. v. Apotex, Inc. (Fed. Cir.)

Case Name: Allergan, Inc. v. Apotex, Inc., No. 2013-1245, -1246, -1247, 2014 U.S. App. LEXIS 10710 (Fed. Cir. June 10, 2014) (Circuit Judges Prost, Reyna and Chen presiding; Opinion by Prost, C.J.; Dissent-in-part by Chen,...more

Case Alert -- Federal Circuit Reverses District Court Denying Stay Pending Covered Business Method Review

On July 10, 2014, the Federal Circuit issued an opinion in VirtualAgility Inc. v. Salesforce.com, Inc., in which it reversed the district court’s order denying Salesforce’s motion to stay the district court suit pending...more

Challenging Prior Art Status In Post-Grant Proceedings

An inter partes review (“IPR”) proceeding allows a party to challenge the validity of a patent before the Patent Trial and Appeals Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”). In an IPR proceeding,...more

More Details, Details

Integrated Global Concepts, Inc. v. J2 Global, Inc., IPR2014-01027, Paper 4 (July 7, 2014), the Board granted the petition a filing date, but required the petition to fix the claim charts, which may not “include arguments,...more

Prior Art “Patents and Printed Publications” Include the Patent Under Review

In Intri-Plex Technologies, Inc. v. Saint-Gobain Performance Plastics Rencol Limited, IPR2014-00309, Paper 07/03/2014 19, the Board denied reconsideration that admitted prior art in the patent under review constituted “prior...more

General Conclusions About Basic Knowledge or Common Sense Are Insufficient for Core Factual Findings

K/S HIMPP v. Hear-Wear Techs., LLC - Addressing whether the U.S. Patent and Trademark Office (USPTO) properly refused to reject as obvious a claim calling for a multi-prong electrical connection, the U.S. Court of...more

Expert's Failure to Properly Apply Obviousness Standard Leads to Vacated Jury Verdict

InTouch Techs., Inc. v. VGo Communications, Inc. - Addressing the sufficiency of expert testimony to support a jury’s finding of obviousness, the U.S. Court of Appeals for the Federal Circuit reversed the district...more

Printed Publication Need Not Be Easily Located to Be Prior Art

Suffolk Techs., LLC v. AOL Inc. - Addressing the standard for establishing that an alleged prior art reference qualifies as a “printed publication,” the U.S. Court of Appeals for the Federal Circuit affirmed summary...more

Design Patent Case Digest: Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, LTD.

Decision Date: April 21, 2014 - Court: Patent Trial and Appeal Board - Patents: D617,465 - Holding: Claimed design is obvious and therefore UNPATENTABLE - Opinion: Petitioners Munchkin, Inc. and Toys...more

Keeping Score at the PTAB

Motorola v. Mobile Scanning; Adidas v. Nike; Berk-Tek v. Belden; Munchkin, Inc. v. Luv N' Care, Ltd. - In the final written decisions of five inter partes reviews (IPRs) the Patent Trial and Appeal Board (PTAB)...more

Pre-AIA Statute Did Not Give Patent Owner in an Ex Parte Reexamination the Right to Bring an Action in District Court

In re Teles AG Informationstechnologien - Addressing whether a patent owner involved in a pre-America Invents Act (AIA) ex parte reexamination, could challenge an adverse reexamination decision in a district court...more

Combining Two Drugs Is Not Always Obvious

Sanofi-Aventis Deutschland GMBH v. Glenmark Pharmaceuticals Inc. - Addressing the obviousness of combining two known hypertension medications, the U.S. Court of Appeals for the Federal Circuit upheld a ruling of...more

A Combination of References Need Only Provide a “Reasonable Expectation of Success”

Hoffmann La-Roche Inc. v. Apotex Inc. - Addressing the validity of a dosing regimen patent in Abbreviated New Drug Application (ANDA) litigation, the U.S. Court of Appeals for the Federal Circuit affirmed a lower...more

IP Newsflash - May 2014

FEDERAL CIRCUIT CASES - Newsgroup Post Held to be A Printed Publication and Anticipatory Prior Art - On May 27, 2014, the Federal Circuit affirmed a decision granting summary judgment of invalidity by the...more

Three Point Shot - May 2014

Tiger Woods Misses the Cut in Golf Memorabilia Dispute - Tiger Woods skipped The Masters this year for the first time in 20 years because he was recuperating from back surgery. But his back may not be the only source...more

Functional Claim Language – “Adapted To” and “Configured To” – Having Narrow Interpretations

Patent claim drafting is a challenging exercise that requires balancing potential infringement of the claim against the prior art. A patent practitioner may easily draft a claim of very narrow scope, but if such claim has a...more

PTAB Not a “Death Squad”—More Like a Surgeon

Xilinx, Inc. v. Intellectual Ventures I LLC; Illumina, Inc. v. Trs. of Columbia Univ.; Micron Tech., Inc. v. Bd. Of Trs. of Univ. of Ill.; CBS Interactive, Inc. v. Helferich Patent Licensing, LLC - In the final written...more

IP Litigation Insider

Eastern District of Texas Adopts Model Order for Focusing Patent Claims and Prior Art - On Tuesday, October 29, 2013, Chief District Judge Leonard Davis, on behalf of the Eastern District of Texas, adopted a model...more

PTAB Invalidates Patent in First IPR Trial of a Design Patent

On April 21, 2014, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office issued a final written decision in the first inter partes review proceeding involving a design patent (IPR2013-00072). In...more

Board Invalidates Design Patent

In Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, Ltd., IPR 2013-00072, Paper 28 (April 28, 2014), the Board invalidated U.S. Patent No. D617,465. The Petition argued that the patent was not entitled to its priority...more

Federal Circuit Find Fractures in Roche Boniva Patents

In Hoffman-LaRoche, Inc. v. Apotex, Inc., the Federal Circuit affirmed the district court’s summary judgment that two Roche Boniva patents are invalid as obvious. The conclusion of obviousness is not particularly remarkable...more

No 102(e) Prior Art in a CBMR

In Trulia, Inc, v. Zillow, Inc., CBM2013-00056, Paper 19 (April 10, 2014), it was called to the Board’s attention that the prior art relied upon in the petition was 102(e) which is not proper prior art for a covered business...more

Defensive Publication: An Alternate Way of Maintaining Your Turf in a Competitive Marketplace

It is common knowledge that the bread-and-butter of emerging startups lies in securing exclusive rights to key aspects of their implicated technology. Staking claims to valuable IP assets via direct ownership or exclusive...more

GENERICally Speaking - Vol. 4, No. 1

The Hatch-Waxman Litigation and Life Sciences practice groups at Robins, Kaplan, Miller & Ciresi L.L.P. are pleased to offer the latest edition of their quarterly publication regarding ANDA patent litigation issues and the...more

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