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Patents Prior Art Appeals

New Fed Circuit decision bolsters on-sale bar

by Thompson Coburn LLP on

Patent litigators will tell you that there are many ways to invalidate a patent. One of their favorites is a self-inflicted ground of invalidity known as the “on-sale bar.” Under patent law, if you sell (or offer to sell)...more

Federal Circuit Clarifies the On-Sale Bar Under the AIA: No Public Disclosure of the Invention Is Required if the Existence of the...

Under 35 U.S.C. § 102, the on-sale bar generally holds that the sale of a patented invention more than one year before the filing date invalidates the patent. Before the America Invents Act (AIA), courts held that...more

District Court Precludes Defendant from Asserting Invalidity Grounds That It Raised or Could Have Reasonably Raised in IPR...

On May 11, 2017, Magistrate Judge Roy Payne in the Eastern District of Texas recommended that patentee Biscotti’s inter partes review (IPR) estoppel motion be granted–in-part and denied-in-part....more

Federal Circuit Maintains Pre-AIA Interpretation of the On-Sale Bar for Public Sales

by Brinks Gilson & Lione on

In Helsinn Healthcare S.A., v. Teva Pharm. USA, Inc., the Federal Circuit recently held that, despite changes to the statutory language of § 102 under the Leahy-Smith America Invents Act (“AIA”), the Court’s pre-AIA...more

Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer

by Jones Day on

In Aylus Networks, Inc. v. Apple, Inc., No. 16-1599 (Fed. Cir. May 11, 2017) (“Federal Circuit Op.”), the Federal Circuit affirmed the district court’s decision that Apple did not infringe Aylus’s patents. See Aylus Networks,...more

Are Secret Sales Prior Art Under The AIA?

by Foley & Lardner LLP on

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit found that a publicly-announced “Supply and Purchase” agreement triggered the on-sale bar under pre-AIA 35 USC § 102(b) and under AIA 35 USC §...more

Federal Circuit Clarifies the On-Sale Bar under AIA

Last week the Federal Circuit in Helsinn Healthcare v. Teva Pharmaceuticals clarified the scope of the on-sale bar rule under the America Invents Act (AIA). The on-sale bar in general means that a sale or an offer to sale of...more

Federal Circuit Holds Objective Indicia Must Be Linked to Novel Features

by Jones Day on

In Novartis AG v. Torrent Pharms. Ltd. (2016-1352), the Federal Circuit affirmed the PTAB’s decision in consolidated IPR proceedings (IPR2014-00784, IPR2015-00518) invalidating all claims of U.S. Patent 8,324,283. In doing...more

A Sale is Still a Sale under the AIA

At least so far, the meaning of “on sale” under AIA 35 U.S.C. §102(a)(1) has not changed from pre-AIA 35 U.S.C. §102(b) following a decision by the Federal Circuit in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.,...more

Federal Circuit Rejects Board’s Understanding of Prior Art

The Federal Circuit has now reversed the Patent Trial and Appeal Board’s decision in Synopsys, Inc. v. ATopTech, Inc. finding claims 1 and 32 of U.S. Patent No. 6,567,967 (the “‘967 patent”) as being “not supported by...more

In re Apple Inc. (Fed. Cir. 2017)

Acting as Lexicographers Saves Patent from Being Found Invalid - In a recent Federal Circuit decision, the Court highlighted an old rule in that the inventors may act as their own lexicographers to create a claim term and...more

To Teach Away, Prior Art Must Criticize, Discredit or Discourage the Invention

by McDermott Will & Emery on

Addressing issues of obviousness in the context of an asserted teaching away, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision finding that the challenged claims were...more

Novartis’ Gilenya Patent Invalidated as Obvious

On April 12, 2017, the Federal Circuit affirmed the determination by the US Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (Board) that the claims of U.S. Patent No. 8,324,283 (“the ’283 patent”) were...more

Federal Circuit to PTAB: No Short Cuts Allowed

Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data...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

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

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

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

Prior Art that Must be Distorted from its Obvious Design Does Not Anticipate

In In re Chudik, [2016-1817] (March 27, 2017), the Federal Circuit reversed the PTAB’s determination that claims 1, 15, 18, and 33–40 of U.S. Patent Application 11/525,631 on an implant for shoulder replacement surgery were...more

Vague Claim Construction Arguments Before The PTAB May Trigger A Waiver On Appeal

by Brinks Gilson & Lione on

The Patent Trial and Appeal Board (PTAB) upheld the patentability of U.S. Patent No. 8,601,154 (“the ‘154 patent”), owned by SimpleAir, Inc. (“SimpleAir”) in an inter partes review petition filed by Google. Google Inc. v....more

Incorporation by Reference Used to Arrive at BRI Claim Construction

by McDermott Will & Emery on

Resolving what was primarily a broadest reasonable interpretation (BRI) claim construction issue, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) decision that invalidated claims...more

Factual Findings Required to Show “Apparent Reason to Combine”

by McDermott Will & Emery on

Addressing issues of obviousness and anticipation in the context of an inter partes review, the US Court of Appeals for the Federal Circuit issued two decisions with respect to the same patent, vacating and remanding the...more

U.S. Supreme Court Eliminates Laches Defense for Damages in Patent Suits

The U.S. Supreme Court on Tuesday, March 21, 2017, held in a 7-1 decision that the defense of laches is not available under the Patent Act to bar claims for damages. SCA Hygiene Products Aktiebolag v. First Quality Baby...more

Federal Circuit to PTAB – No 102 Gap Filling

by Jones Day on

In a precedential opinion dated March 14, 2017, the Federal Circuit reversed the PTAB, holding that in finding a claim anticipated under 35 USC § 102, the Board cannot “fill in missing limitations” simply because a skilled...more

"In SCA Hygiene, Supreme Court Rules Laches Not a Defense to Damages Within Statutory Period in Patent Cases"

In a 7-1 decision issued on March 21, 2017, the U.S. Supreme Court held in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC that laches cannot be invoked as a defense against a claim for damages in a patent...more

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