Prior Art

News & Analysis as of

Board Denies Kyle Bass Challenge Against Biogen’s Tecfidera® Patent In View of Unexpected Results

The PTAB issued a Final Written Decision finding that Biogen’s patent on treating Multiple Sclerosis (“MS”) with a certain dose amount was not obvious because the clinical efficacy exhibited by administering this dose amount...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

In re Ethicon: Connecting Seemingly Unrelated Dots May Support An Obviousness Conclusion

Composition claims are often rejected as obvious over the combinations of prior art referenced, that separately claim the ingredients of the claimed combination. Moreover, often the disclosure of the claimed ingredients is in...more

Federal Circuit to PTAB – No 102 Gap Filling

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

ANDA Update - March 2017 Volume 3, Number 1

Speculative Evidence of Irreparable Harm Sinks Bayer's Request for Permanent Injunction - Bayer Pharma AG, et al. v. Watson Laboratories, Inc. (D. Del. December 28, 2016) - Applying the eBay factors to Plaintiff...more

Federal Circuit Reverses PTAB’s Holding of Anticipation Despite an Element Missing from the Prior Art

On March 14, 2017, the United States Court of Appeals for the Federal Circuit clarified, in a precedential opinion, that an anticipating reference must supply all of the claim elements, regardless of what a person of skill in...more

Federal Circuit Limits Scope of Covered Business Method Review

The Federal Circuit recently clarified what patents are subject to the Transitional Program for Covered Business Method Patents, or CBM review, in Secure Axcess, LLC v. PNC Bank National Association. In clarifying what...more

Publish or Perish? The Balance Between Public Disclosure and IP Protection in Scientific Research

Public disclosures can destroy intellectual property rights related to the work. Scientists and their attorneys need to strike a delicate balance between competing interests. ...more

Design Patent Survives AIA Review

In a rare inter partes review (IPR) decision involving a challenge to a design patent, the Patent Trial and Appeal Board (PTAB) issued a final decision finding that the petitioner had not shown that a sole claim of a design...more

AliceStorm Update February 2017

As many of my readers noticed, I didn't publish any of my own blogs in January and February. As it turned out, I suffered from a peculiar form of seasonal affective disorder (SAD), what I would call SMIAD: Subject Matter...more

The PTAB Issues a Rare Grant of Request for Rehearing in View of Institution Decision Overlooking a Figure in Prior Art

The Patent Trial and Appeal Board granted a rare request for rehearing of its earlier decision denying institution of an asserted anticipation ground in Asustek Computer, Inc. v. Avago Technologies General IP (Singapore) Pte....more

Post-Grant Review Estoppel – Looking Forward by Looking Back at Estoppel in Inter-Partes and Covered-Business-Method Review

In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more

In an IPR, the Burden of Persuasion in an Obviousness Challenge Never Shifts to Patentee

On March 3, 2017, in a final written decision in IPR2015-01838, the PTAB rejected an obviousness challenge brought by DuPont against a patent owned by Furanix Technologies B. V. directed to methods for preparing the known...more

Federal Circuit Reiterates That Patent Prosecution Disclaimers Must Be “Clear and Unmistakable”

On March 3, 2017, the United States Court of Appeals for the Federal Circuit reaffirmed, in a precedential opinion, that prosecution disclaimers may only limit the scope of a claim where the disclaimer is “both clear and...more

Secondary Considerations of Non-Obviousness Cap on Obviousness Showing

In a rare case where secondary considerations of non-obviousness carried the day, the Patent Trial and Appeal Board (PTAB) concluded that even though the petitioner made a sufficient obviousness showing, the patent owner’s...more

The University of Pennsylvania Overcomes Kyle Bass’s Obviousness Challenge to Juxtapid® Patent Claims Using Commercial Success

The PTAB issued two final written decisions upholding The University of Pennsylvania’s claims to methods of treating high cholesterol based, in part, on commercial success and the meaning of a “printed publication” in...more

Intellectual Ventures LLC v. Semantic Corporation and Veritas Technologies LLC (D. Del. 2017)

Patent Directed to System for Remote Mirroring of Digital Data Found Invalid under Section 101 - Intellectual Ventures brought a patent-infringement suit against Symantec Corpo. and Veritas Technologies asserting that...more

Prior Art Preference for an Alternative is Not Enough to Teach Away

In Meiresonne v. Google, Inc., [2016-1755] (March 7, 2017), the Federal Circuit affirmed the PTAB determination that claims 16, 17, 19 and 20 of U.S. Patent No. 8,156,096 on a system whereby a user can identify a supplier of...more

Where Party Joined Pending IPRs, Delaware Takes Broad View of § 315 Estoppel

In Parallel Networks Licensing, LLC v. International Business Machines Corporation, No. 1:13-cv-02072, Dkt. No. 366 (D. Del. Feb. 22, 2017) (Slip Op.), the court held IBM was estopped from asserting obviousness under §103...more

Federal Circuit Review | February 2017

“Common Sense” Alone Is Not a Sufficient Motivation to Combine References - In In Re: Van Os, Appeal No. 2015-1975, the Federal Circuit held that the Patent Trial and Appeal Board’s reliance on intuition or common sense...more

What Petitioners and Patent Owners Need to Know About the Scope of IPR Estoppel

Judge Sue L. Robinson of the U.S. District Court for the District of Delaware recently identified a logical fallacy in the “statutory estoppel” jurisprudence with respect to 35 U.S.C. § 315(e)(1). According to the...more

Copyright Date Alone Does Not Prove Public Accessibility of Software User Guide

Addressing the standard for establishing whether a prior art reference qualifies as a “printed publication,” the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR), finding that the...more

The shifting standard for IPR estoppel: Where are we now?

There is no doubt that inter partes review proceedings (IPRs) are now the favored mechanism for invalidating patents. The Patent Trial and Appeal Board (Board) is the single largest venue for U.S. patent disputes, beating out...more

PTAB Finds Patent Eligibility in a CBM Proceeding, With a Dissent Challenging the Federal Circuit

In a final written decision, the PTAB found all challenged claims patent-eligible in Tradestation Group, Inc. v. Trading Tech. Int’l, Inc., CBM2015-00161, Paper 129 (P.TA.B. Feb. 17, 2017), an uncommon result in a CBM...more

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