Prior Art

News & Analysis as of

PTAB Can Rely Upon Prior Art Not Cited in an IPR Institution Decision to Establish the State of Art

The Federal Circuit affirmed the PTAB’s final determination in Genzyme Therapeutic Products Limited Partnership v. Biomarin Pharmaceutical Inc., Nos. 2015-1720, 2015-1721 (Fed. Cir. June 14, 2016), holding that the PTAB did...more

Federal Circuit Distinguishes “Motivation to Combine” from “Expectation of Success” for Obviousness Purposes

Addressing issues of obviousness and the proper scope of inter partes review (IPR) reply briefs, the US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB or Board) IPR decision finding the...more

Federal Circuit Review | June 2016

The PTAB Does Not Have to Consider New Arguments Raised in IPR Reply Briefs - In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Appeal No. 2015-1693, the Federal Circuit upheld a PTAB decision finding of...more

Supreme Court Holds that a Decision to Institute an IPR Proceeding Is Not Subject to Judicial Review and that the USPTO May Use...

On June 20, 2016, the Supreme Court issued its decision in Cuozzo Speed Technologies, LLC v. Lee which involved an appeal from the first decision by the Court of Appeals for the Federal Circuit from an Inter Partes Review...more

Same-Day Continuing Applications are Co-pending under s. 120

The outcome of this question of statutory construction was not really in doubt, given the fact that an adverse holding could invalidate thousands of patents which needed same-day copendency to avoid intervening prior art....more

How the PTAB Treats Pre-Institution Factual Disputes

As a result of recent changes in the PTAB rules of practice, counsel for patent owners should consider whether there are opportunities to identify factual deficiencies in petitions. Counsel for petitioners in inter partes...more

Computer Generated Prior Art

An old adage states that an infinite number of monkeys typing for an infinite amount of time will surely produce Shakespeare’s Hamlet. In a similar vein, the web site All Prior Art seeks to use computers and algorithms to...more

USPTO Releases Update on Patent Eligibility Decision in Light of Enfish

On May 19, the USPTO released an update to patent examiners regarding the U.S. Court of Appeals for the Federal Circuit’s (CAFC) recent decision in Enfish, LLC v. Microsoft Corp. and TLI Communications LLC v. A.V. Automotive,...more

“Unclean Hands” Doctrine Erases Merck’s Damage Award

In my last post on the district court’s ruling in Gilead v. Merck, I implied that Gilead had convinced the Judge that Merck had employed inequitable conduct (“IC”) in conducting its negotiations with Pharmasset, the company...more

A Combination of References Can be Obvious Even if it Requires a Bit of Work

In Allied Erecting v. Genesis Attachments, LLC, [2015-1533] (June 15, 2016), the Federal Circuit affirmed the PTAB’s decision in IPR2014-001006 that claims 1–21 of U.S. Patent No. 7,121,489, were obvious. Allied first...more

Board Not Limited to Prior Art in the Grounds, as Long as Patent Owner Had Notice

In Genzyme Therapeutic Products Limited v. Biomarin Pharmaceutical, Inc., [2015-1720, 2015-1721](June 14, 2016), the Federal Circuit affirmed the PTAB’s decisions in IPR2013-00534 and IPR2013-00537 that certain claims of ...more

The Introduction of New Evidence Is Permitted During IPR Proceedings

On June 14, 2016, the Federal Circuit issued an opinion clarifying that the introduction of new evidence is not only permitted, but “is to be expected,” in inter partes review proceedings. As long as the opposing party is...more

Federal Circuit Affirms PTAB’s Decision Invalidating Genzyme Patents

On June 14, 2016, the Federal Circuit issued a final decision in Genzyme Therapeutic Prods. v. Biomarin Pharms., No. 2015-1720 case affirming two PTAB IPR final decisions invalidating as obvious the claims of U.S. Patent Nos....more

No Moving Targets: Construing Patent Claims in View of SAS v. ComplementSoft

In its majority opinion rendered June 10, 2016 in SAS Institute, Inc., v. ComplementSoft, LLC, __ F. 3d __ (Fed. Cir. 2016), the Federal Circuit upheld the Patent Trial and Appeal Board’s construction of claim terms and...more

Merck’s Solvaldi® Patents Unenforceable for Egregious Misconduct

In Gilead Sciences, Inc. v. Merck & Co., Inc., Case No. 13-cv-04057-BLE (N.D. Cal., June 6, 2016), Judge Beth Freeman, sitting in equity, found that the record compelled a finding that Merck and its employee “D” had obtained...more

Using the Enfish Decision to Your Advantage – Practical Tools for Fighting Alice

On May 12, 2016, the Federal Circuit reversed the District Court and found two software-related patents “directed to an innovative logical model for a computer database” patent eligible under 35 U.S.C. §101 [Enfish, LLC, v....more

MBHB Snippets: A review of developments in Intellectual Property Law - Volume 14, Issue 2 (Spring 2016)

Pre-AIA and Post-AIA Issues Presented by the On-Sale Bar - The “on-sale” bar to patentability refers to a sale or offer for sale of an invention that can invalidate the patent for that invention. The...more

Pre-AIA and Post-AIA Issues Presented by the On-Sale Bar

The “on-sale” bar to patentability refers to a sale or offer for sale of an invention that can invalidate the patent for that invention. The America-Invents-Act (AIA), which altered the language in the statutes that apply to...more

In re Aqua Products, Inc.: Federal Circuit Continues To Uphold PTAB Limits on Motions To Amend

Although the America Invents Act permits patent owners to file motions to amend claims in a patent under review, see e.g., 35 U.S.C. § 316(d), patentees generally have been unsuccessful in seeking amendments. The USPTO has...more

Prior Art: When On Sale Is Not 'On Sale'

Pursuant to Section 102 of the Patent Act, the “on-sale” bar can invalidate a patent when the claimed invention has been the subject of a commercial sale or offer for sale, and the invention is ready for patenting. Prior to...more

May 2016: Patent Litigation Update

District Court Rules Non-Public Sales or Offers for Sale No Longer Apply to the “On-Sale” Bar Under the AIA. The on-sale statutory bar is a limitation on patentability that prohibits an inventor from obtaining a patent, when...more

Patent Owner Must Show Patentability Over Art of Record to Amend Claims in IPR

In In re Aqua Products, Inc., [2015-1177] (May 25, 2016), the Federal Circuit affirmed the PTAB’s denial of the patent owner’s motion to amend in IPR2013-00159. The Federal Circuit made quick work of the PTAB’s placing...more

PTAB Reversed for Failing to Explain “Why” a Person of Skill Would Modify the Prior Art

It is no secret that patent owners have, on average, struggled at the PTAB over the last three and a half years. Some practitioners say that a reason for this result is that the Board many times takes an aggressive approach...more

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (Fed. Cir. 2016)

Have you ever mixed up the obviousness determinations of "motivation to combine" and "reasonable expectation of success"? If so, you are apparently not alone -- the Federal Circuit recently faulted the Patent Trial and...more

CAFC Affirms Finacea Gel Infringement Under Doctrine of Equivalents

In Intendis GmbH v. Glenmark Pharmaceuticals Inc., USA, the Federal Circuit affirmed the district court decision that found infringement under the doctrine of equivalents. This case shows that the doctrine of equivalents...more

494 Results
|
View per page
Page: of 20
JD Supra Readers' Choice 2016 Awards

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:

Sign up to create your digest using LinkedIn*

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.

Already signed up? Log in here

*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
×