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Printed Publications in Post-Grant Reviews

GRÜNENTHAL GMBH v. ANTECIP BIOVENTURES II LLC, PGR2019-00026, -00027, 00028 (PTAB, July 28, 2020) - The PTAB issued decisions in a trio of post-grant reviews. One of the defenses put forward by the Patent Owner was that...more

Proposed PTAB Rule Changes

On May 27, 2020, the Federal Register published proposed rule changes to trial procedures before the PTAB. The rule changes address and codify the following...more

Arthrex Is Not for Everyone

Ciena Corp. v. Oyster Optics, LLC, Appeal No. 2019-2117 (Fed. Cir., May 5, 2020). - On January 28, 2020, the Federal Circuit issued a non-precedential order that denied IPR petitioner Ciena’s motion to have a judgment...more

Article III Standing Strikes Again

Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp., Appeal No. 2018-2273 (Fed. Cir., April 23, 2020). Argentum and other petitioners filed IPRs against Novartis’ patent related to methods of treating...more

IPR Institution Is Still Unappealable

Thryv, Inc. v. Click-To Call Technologies, LP, et al., 590 U.S. ___, Case No. 18-916 (slip op., April 20, 2020) - John P. Isacson IPR petitioner Thryv challenged patent owner Click-To-Call’s patent and several claims were...more

A Bite in the Apple

Apple Inc. v. California Institute of Technology, Appeal Nos. 2019-1580, -1581 (Fed. Cir., March 5, 2020). In January of this year, a jury awarded the California Institute of Technology (Caltech) $837,801,178 for Apple’s...more

U.S. Government in Search of Arthrex Reversal

Image Processing Technologies LLC v. Samsung Electronics Co., LTD. et al., Appeal Nos. 2018-2156, 2019-1408, 2019-1485 (Fed. Cir. March 2, 2020). The Federal Circuit vacated and remanded the PTAB’s decisions against Image...more

The Person of Ordinary Skill in the Art Still Counts

Koninklijke Philips N.V. v. Google LLC et al., Appeal No. 2019-1177 (Fed. Cir., January 30, 2020). Google filed an IPR against Philips’ patent relating to a method of forming a media presentation on a client device from...more

IPR Estoppel Strikes Again

Wasica Finance GmbH et al. v. Schrader Int’l, Inc. et al., C.A. 13-1353-LPS (D. Del. January 14, 2020) (publicly available on January 21, 2020)....more

IPR Institution Is Not Permanent, and Is Nonappealable – Part 2

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir., January 13, 2020) - On August 29, 2019, we reported on the Biodelivery decision, where the PTAB received on...more

The PTAB’s Erroneous Presumption

Fox Factory, Inc. v. SRAM, LLC, Appeal Nos. 2018-2024, -2025 (Fed. Cir. December 18, 2019). SRAM owned two patents pertaining to bicycle chainrings, which are toothed disks that engage bicycle chains. Fox filed inter...more

Vacatur and Remand Is Not for Everyone

Customedia Tech., LLC v. Dish Network Corp.., Appeal Nos. 2018-2239, -2240, -2310, 2019-1000, -1001, -1002, -1027 and -1029 (Fed. Cir., Nov. 1, 2019). The day after the Federal Circuit issued its decision in Arthrex, Inc....more

IPR Institution Is Not Permanent, and Is Nonappealable

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir. August 29, 2019) - On motion, the Federal Circuit dismissed the second appeals in three IPRs pertaining to oral...more

A Party Who Lacks Standing Can Still Trigger the Section 315(b) Time Bar

GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (Precedential Opinion Panel, August 23, 2019) - Section 315(b) of Title 35 prohibits institution of an IPR where the petition is filed more than one year after service of a...more

Inter Partes Review of Pre-AIA Patents is Constitutional

Celgene Corp. v. Peter, Appeal Nos. 2018-1167, -1168, -1169 (Fed. Cir. July 30, 2019) - Celgene owned two patents that pertained to methods of safely distributing potentially hazardous drugs.  The patents were challenged...more

Neptune Generics, LLC v. Eli Lilly & Co., No. 2018-1257 (Fed. Cir. Apr. 26, 2019).

Cited Statutory Sections: 101 and 103 - This appeal concerned 10 inter partes reviews (IPRs) filed by petitioners Neptune Generics, Fresenius Kabi USA and Mylan Laboratories against all of the claims of U.S. Patent No....more

Sometimes the Patent Office Has the Last and Only Word

The Federal Circuit just issued a decision that confirms its stance on Article III standing for appeals from inter partes reviews (IPRs), making it tougher for unsuccessful IPR petitioners to obtain judicial review of U.S....more

Obviousness-Type Double Patenting Just Became Less of a Problem for Innovators

The Federal Circuit recently issued a pair of decisions concerning the Gilead doctrine, which allowed later-issuing patents to be obviousness-type double patenting (ODP) references against earlier-issuing patents....more

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