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Amicus Curiae Briefs Authorized on Tribal Sovereign Immunity in IPRs of Restasis® Patents

The Saint Regis Mohawk Tribe’s recent motion to terminate pending IPRs on patents purported to cover Allergan’s Restasis® product has spurred two parties to seek authorization from the PTAB to file amicus briefs. Earlier this...more

The PTAB Reverses Original Decision After the Federal Circuit Reverses Key Findings and Limits Issues for Review

On October 17, 2017, the PTAB issued a final written decision in an IPR holding all claims unpatentable after the Federal Circuit vacated and remanded the PTAB’s previous final written decision. The PTAB reversed their...more

PTAB Designates as “Informative” Three Discretionary Denials of IPR Institution Decisions

On October 24, 2017, the PTAB designated as “informative” the following three decisions that discretionarily denied institution of IPR petitions under 35 U.S.C. § 325(d). Section 325(d) provides that “the Director may take...more

Nonprofit Group Files IPR Petition Seeking to Invalidate Hepatitis C Drug Patent

In an effort to lay the groundwork for generic entry and reduced drug prices, the non-profit group Initiative for Medicines, Access and Knowledge, Inc. (I-MAK), with the support of the Laura and John Arnold foundation, has...more

PTAB Extends Deadline to Decide IPR Motion to Amend in view of Aqua Products

The PTAB extended the deadline for issuing its IPR final written decision on a motion to amend by up to six months to provide additional time to consider the impact of the Federal Circuit’s recent en banc Aqua Products...more

The PTAB Authorizes Additional Motion To Amend Briefing in View of Aqua Products

The Board authorized petitioner Kingston to file a Response to the patent owner’s Reply to petitioner’s Opposition to Motion to Amend, based on the Federal Circuit’s en banc holding that the burden to establish...more

Patent Trial and Appeal Board Activity in the First Five Years+

September 16, 2017 marked five years since the Patent Trial and Appeal Board (PTAB) was created. Some of the notable statistics and trends of the previous 5 years are shown here....more

Allergan and the Saint Regis Mohawk Tribe Enter Patent Agreement to Defend Against IPR of RESTASIS® Patents

In a creative move to take advantage of recent PTAB decisions regarding Sovereign Immunity, (see e.g., Covidien LP v. University of Florida Research Foundation, IPR2016-01274 and Neochord, Inc. v. University of Maryland,...more

Hospira Finds Mixed Results in Instituting IPRs Against Genentech Patents for Herceptin®

Hospira (owned by Pfizer) filed five IPR petitions against Genentech patents that Genentech asserted were directed to Herpceptin® (trastuzumab). The PTAB has now instituted IPRs in three of the five petitions and denied the...more

The PTAB Reaches Same Determination After Remand Despite Having Construction and Analysis Set Aside

On July 28, 2017, the PTAB issued a final written decision holding all claims unpatentable in an IPR after the Fed. Cir. vacated and remanded the PTAB’s previous final written decision. On remand, the PTAB reached the same...more

The PTAB Grants the University of Minnesota Sovereign Immunity but does not Terminate IPR

The PTAB has again addressed sovereign immunity in the context of an IPR. Reactive Surfaces, LTD. petitioned for IPR of U.S. Patents No. 8,394,618 and 8,252,571. The ’618 and ’571 patents are co-owned by Toyota Motor...more

Settlement 5 Days Before Final Written Decision Deadline Results in Termination Of IPR

In an order issued in Petroleum Geo-Services Inc. v. Westerngeco LLC, IPR2016-00407, IPR2016-00499, Paper 29 (P.TA.B. Jul. 5, 2017), the PTAB terminated the proceedings after the parties indicated that they had settled their...more

Developments in IPR Remands from the Federal Circuit During the First Half of 2017

Previously, we reported the outcomes of remands from the Federal Circuit to the PTAB in IPR cases through 2016.... This note is an update to that report, surveying the outcomes and status of remands to the PTAB in the...more

The PTAB Terminates IPR Based on Sovereign Immunity of University of Maryland

On May 23, 2017, the PTAB granted the University of Maryland’s (UM) motion to terminate inter partes review based on UM’s sovereign immunity in Neochord, Inc. v. Univ. of Maryland, Baltimore and Harpoon Medical, Inc.,...more

Supreme Court Will Decide Whether the PTAB Must Address All Claims Challenged in a Petition

The Supreme Court granted a petition for writ of certiorari to address whether the PTAB is required to issue a final written decision with respect to the patentability of every claim challenged by a petitioner in SAS...more

PTAB Grants Joinder of Time-Barred Petitioner to IPR after Settlement with Original Petitioner

The PTAB granted joinder of a time-barred petitioner to an IPR trial after the patent owner settled its dispute with the original petitioner in AT&T Services, Inc. v. Convergent Media Solutions, LLC, IPR2017-01237, Paper 10...more

PTAB Holds All Claims Unpatentable in Reversal on Remand

The PTAB recently issued a final written decision on remand from the Federal Circuit, holding all claims to be unpatentable in Athena Automation Ltd., v. Husky Injection Molding Sys. Ltd., IPR2013-00290, Paper 61 (P.T.A.B....more

PTAB Releases March 2017 Stats

The USPTO’s Patent Trial and Appeal Board (PTAB) has released its March 2017 statistics. The end of March marking the halfway point in the USPTO's fiscal year, the overall totals for fiscal year 2017 (FY 2017) are coming...more

PTAB Grants-in-Part Motions to Amend in Three Related IPRs

The PTAB granted-in-part motions to amend in three related proceedings: Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2015-01953, Paper 107 (P.T.A.B. sealed on March 23, 2017, made public on April 19, 2017);...more

Ericsson Tests Scope of the PTAB’s Sovereign Immunity Holding

On January 25, 2017, a panel of the Patent Trial and Appeal Board (PTAB) held that “Eleventh Amendment Immunity bars the institution of an inter partes review against an unconsenting state that has not waived sovereign...more

PTAB Releases February 2017 Stats

The USPTO’s Patent Trial and Appeal Board (PTAB) has released its February 2017 statistics. After a spike in new petition filings for January 2017, new filings returned to a more typical pace in February....more

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

PTAB Institutes Two IPRs in Hospira v. Genentech Avastin Dispute

Bevacizumab (Avastin®) is the subject of the widely watched “patent dance” dispute between Genentech and Amgen regarding Amgen’s proposed biosimilar. Hospira, however, (now owned by Pfizer) has chosen a different path in...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

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

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