News & Analysis as of

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

Sonos Forward-Publishes Patents: Strategic Upside, Limited Downside

Sonos' policy to forward-publish its patents seems to be more a calculated public relations move with some strategic upside and limited downside....more

Reference with Missing Pages May Be Used in Reexamination - In re Enhanced Security Research, LLC

Addressing the issue of whether, in a patent reexamination, a reference with missing pages may be submitted and relied upon by the patent examiner in rejecting patent claims, the U.S. Court of Appeals for the Federal Circuit...more

Playing Fast and Loose With Corroborating Evidence: Patent Advocacy Inequitable Conduct

Patent litigation often involves the assertion of prior art anticipation and obviousness defenses. U.S. patents are presumed valid, so a defendant seeking to overcome this presumption must persuade the fact-finder of a...more

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 "Order Focusing Patent Claims and Prior Art To Reduce Costs." The Model Order's goal is to reduce...more

Inter Partes Review Worthwhile Alternative to Patent Litigation

The United States Patent and Trademark Office (USPTO) recently issued its second decision in a new inter partes review proceeding. In the decision, the USPTO Patent Trial and Appeal Board invalidated all of the claims of the...more

The Mystery Of The Federal Circuit Advisory Council’s Short-Lived Model Orders

In July 2013, the Advisory Council for the United States Court of Appeals for the Federal Circuit, a committee that includes Federal Circuit litigators, law professors, court clerks, and government attorneys, issued a “Model...more

Inherency Argument Comes Up Short in Inter Partes Review Petition

Despite having multiple grounds denied, Becton, Dickinson and Company was able to get 8 challenged claims of a One Stockduq Holdings patent into a trial for inter partes review, in a case styled as Becton, Dickinson and Co....more

A Road Test of the New PTAB and a Road Map for Future IPR’s - Garmin Int’l, Inc., v. Cuozzo Speed Techs. LLC

In the final decision of the first inter partes review (IPR) (under the America Invents Act), in a proceeding that included a rejection of the patent owner’s attempt to antedate prior art using, as evidence, an inventor’s...more

Old Compound + Known Purpose + Prior Art Concentrations = Obvious -- Galderma Labs L.P., et al v. Tolmar, Inc.

In a split panel decision, the U.S. Court of Appeals for the Federal Circuit reversed a district court concluding that the claims at issue were invalid as obvious because they were directed to the use of an old compound for a...more

Inter Partes Review Client Alert Series: Amending Claims During Inter Partes Review

The Patent Trial and Appeal Board continues to make clear that amending claims during post-grant inter partes review (“IPR”) challenges is far different from amending claims during original examination or reexamination. The...more

In Defense of Patenting

Fritz Machlup, an economist, once said that if we didn't have a patent system it would be irresponsible to recommend one, but since we have one, it would be irresponsible to abolish it. An Economic Review of the Patent...more

6 Reasons Inter Partes Review Was Popular in 2013

A look back on 2013 reveals that one reform enacted under the America Invents Act – Patent Office Litigation – has perhaps had the most immediate and dramatic impact. While many predicted that Inter Partes Review (IPR)...more

Galderma Laboratories, L.P. v. Tolmar, Inc. (Fed. Cir. 2013)

When does a prior art disclosure of a concentration range of a medicament render obvious the use of a species that falls within that range, when that same use was also known in the prior art? After all, common sense should...more

Eastern District of Texas Adopts Model Order Limiting the Assertion of Patent Claims and Prior Art References

The Eastern District of Texas recently adopted a “Model Order Focusing Patent Claims and Prior Art to Reduce Costs.” The Model Order restricts the number of patent claims and prior art references that can be raised during...more

Recent Federal Circuit decision leaves certain composition claims vulnerable

Last week, in a ruling that could be a boon to generic drug makers, the Federal Circuit invalidated claims covering the 0.3% concentration of Differin® (adapalene) acne gel as obvious. Galderma Labs. v. Tolmar, Inc. (Fed....more

Hindsight and Teaching Away Arguments Fall Short in Decision to Initiate IPR Trial

In a short decision, Fellowes was able to get 16 challenged claims of a Speculative Product Design patent into a trial for inter partes review, in a case styled as Fellowes, Inc. v. Speculative Product Design, LLC...more

Board Adopts Claim Construction that is Even Broader than that Proposed by Petitioner

In two challenges of the same patent, Nuvasive was able to get a total of 30 challenged claims of a Warsaw Orthopedic patent into separate trials for inter partes review, in cases styled as NuVasive, Inc. v. Warsaw...more

Federal Circuit Invalidates Galderma Differin Patents

In Galderma Laboratories v. Tolmar, Inc., the Federal Circuit reversed the district court’s findings that the Orange Book-listed patents for Galderma’s Differin® 0.3% gel product were not invalid as obvious. In so doing, the...more

Copyright Notice without Day and Month Insufficient to Establish Reference as Prior Art

In a concise decision, iOnRoad was able to get three challenged claims of a Mobileye Technologies patent into a trial for inter partes review in a case styled as iOnRoad, Ltd. v. Mobileye Techs., Ltd. (IPR2013-00227),...more

Eastern District of Texas Adopts Limits on Asserted Patent Claims and Prior Art

Eastern District’s order aims to focus patent cases in an attempt to reduce costs. On October 29, Chief District Judge Leonard Davis of the U.S. District Court for the Eastern District of Texas signed a general order...more

Branded Company’s Own “Skepticism” Insufficient To Overcome Obvious Treatment Method Patent Claims

Last week the Federal Circuit affirmed a ruling that an AstraZeneca method of use patent was invalid as obvious. AstraZeneca LP v. Breath Ltd. (Fed. Cir. Oct. 30, 2013). At trial two patents were at issue: one was held to...more

Operability of Combined References Considered by PTAB in Obviousness Analysis

In a challenge relying in part on prior art previously considered during prosecution, Zodiac Pool was able to get 15 of 18 challenged claims of an Aqua Products patent into a trial for inter partes review in a case styled as...more

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