The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation. On...more
The Federal Circuit held in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to be entitled to a provisional application’s priority...more
Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of...more
A Petitioner filed a request for rehearing and a request for Precedential Opinion Panel review after the Patent Trial and Appeal Board (PTAB or the “Board”) rejected its petition for post-grant review. The Director of the...more
The Patent Trial and Appeal Board recently rejected an inter partes review petition that relied on a conclusory and unsupported expert declaration. The expert’s written testimony, which repeated portions of the petition...more
The Federal Circuit recently clarified that the scope of IPR estoppel in district courts includes prior art grounds that were raised or reasonably could have been raised in a petition for inter partes review (IPR), reversing...more
The PTAB recently denied a motion to correct clerical mistakes under 37 C.F.R. § 42.104(c) because the corrections presented substantive new evidence that would have had a substantial impact on the proceedings and prejudiced...more
The Patent Trial and Appeal Board (PTAB or Board) recently designated two decisions as precedential and one decision as informative, marking its first precedential and informative designations for 2020. In two of the...more
The Federal Circuit recently held certain method of treatment claims patent eligible under step one of Alice, reversing a district court’s judgment on the pleadings. In that same case, the Federal Circuit upheld the district...more
A federal judge in the Northern District of California recently rejected an argument that would have expanded inter partes review (IPR) estoppel seemingly beyond the plain reading of 35 U.S.C. § 315(e)(2). The plaintiff had...more
The Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) decisions in two inter partes review (IPR) proceedings, finding that the PTAB applied the wrong standard when it presumed there was a nexus...more
A district court in California has granted-in-part a Plaintiff’s motion for summary judgment of no invalidity under 35 U.S.C. § 103 due to inter partes review (IPR) estoppel. During the pendency of the litigation, Defendants...more
1/14/2019
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motion for Summary Judgment ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art
The Patent Trial and Appeal Board (PTAB) denied Pfizer, Inc.’s (“Petitioner”) petition to institute an inter partes review (IPR) of the sole claim of Biogen Inc.’s (“Patent Owner”) U.S. Patent 8,329,172 (the “’172 Patent”)....more
The Patent Trial and Appeal Board (the “Board”) issued a final written decision in an inter partes review determining Claims 1-5 of U.S. Patent No. 8,889,135 owned by Abbvie Biotechnology Ltd. unpatentable as obvious...more
7/11/2017
/ AbbVie ,
Boehringer ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Method Claims ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art
The Patent Trial and Appeal Board (the “Board”) issued a final written decision determining that the Coalition for Affordable Drugs (ADROCA), LLC (“Petitioner”) failed to prove unpatentable claims 1-52 of U.S. Patent No....more
4/12/2017
/ Burden of Production ,
Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Inventors ,
Obviousness ,
Patent Invalidity ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art
SUPREME COURT CASES -
Sequenom Seeks Supreme Court Review of Diagnostic Claims Held Invalid Under § 101 -
On Monday, March 21, 2016, Sequenom, Inc. filed a petition for writ of certiorari in Sequenom, Inc. v. Ariosa...more
DISTRICT COURT CASES -
Minnesota Court Awards Octane Fitness $1.7 Million in Attorney Fees and Costs -
In the seminal case establishing a lower standard for attorney fees in “exceptional” patent cases—Octane Fitness...more
9/8/2015
/ America Invents Act ,
Anti-Patent Trolls ,
Attorney's Fees ,
Counterclaims ,
Covered Business Method Patents ,
Demand Letter ,
Exceptional Case ,
Inter Partes Review (IPR) Proceeding ,
MasterCard ,
Method Claims ,
Motion to Amend ,
Octane Fitness v. ICON ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Trolls ,
Patents ,
Prior Art
SUPREME COURT CASES -
The Supreme Court Upholds Prohibition on Charging Royalties After Patent Expiration -
In Kimble v. Marvel Entertainment LLC, 576 U.S. ---- (2015), the Supreme Court declined to overrule its 1964...more
8/31/2015
/ Akamai Technologies ,
Brulotte ,
Certiorari ,
Claim Construction ,
Contract Termination ,
Contract Terms ,
Direct Infringement ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
Kimble v Marvel Enterprises ,
Limelight Networks ,
Limelight v Akamai ,
Mayo v. Prometheus ,
Obviousness ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prior Art ,
Remand ,
Royalties ,
SCOTUS ,
Section 101