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Swapping Order of References in Non-Instituted Obviousness Combination Does Not Alter Scope of IPR Estoppel

In an April 12, 2018 decision, the District Court for the District of Delaware held that a change in the primary reference of an obviousness combination that was denied institution by the Patent Trial and Appeal Board (PTAB)...more

In Rare Decision, PTAB Grants Request for Rehearing, Reverses its Prior Decision, and Institutes IPR

Requests for rehearing at the Patent Trial and Appeal Board (the “Board”) are not uncommon; however, the Board rarely grants them. One reason for this result is the high standard applied to reverse a prior decision—abuse of...more

Northern District of California Enforces Forum Selection Clause in License Agreement and Orders Licensee to Withdraw IPR Petitions

On March 23, 2018, a district court judge issued a preliminary injunction requiring the defendants to withdraw their petitions for inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB). The court granted...more

No Rehearing Because of Hindsight Declaring

The Patent Trial and Appeal Board (PTAB) denied a petitioner’s request for rehearing of its decision declining institution of inter partes review of a patent owned by Bose Corporation (“Patent Owner.”) The PTAB upheld its...more

PTAB Declines Request to Review Method of Treating Lymphoma Claim

A Patent Trial and Appeal Board (PTAB) panel declined to institute an inter partes review (IPR) of a claim directed to a method for treating low grade B-cell non-Hodgkin’s lymphoma. The challenged method required patients to...more

Court Clarifies Meaning of “Ground for Invalidity” for Purposes of Post-IPR Estoppel

A district court judge recently addressed the scope of estoppel for a petitioner in an inter partes review (IPR). Specifically, the court clarified the meaning of a “ground for invalidity” as it relates to the estoppel effect...more

PTAB Upholds Stay of IPR Pending Review by Supreme Court

A Patent Trial and Appeal Board (PTAB) panel upheld a stay of co-pending inter partes review (IPR) proceedings pending a decision on the patent owner’s petition for writ of certiorari....more

Court Denies Preliminary Injunction in Light of Pending IPR of Similar Patent Claims

A district court judge denied a plaintiff’s motion to preliminarily enjoin a defendant from selling saliva collection kits for DNA testing....more

IP Newsflash - April 2016

FEDERAL CIRCUIT - Federal Circuit Lacks Authority to Review Denial of Institution of IPR on Some, but Not All, Raised Grounds - In an appeal of a decision by the Patent Trial and Appeal Board (PTAB) denying the...more

IP Newsflash - August 2015 #3

DISTRICT COURT CASES - Attorney’s Fees Awarded Against Plaintiff for Inadequate Pre-Filing Investigation and Meritless Post-Discovery Positions - A judge in the U.S. District Court for the Central District of...more

IP Newsflash - August 2015

DISTRICT COURT CASES - Humanized Antibody Not Found to Infringe Under DOE - A district court judge granted UCB, Inc.’s (plaintiff) motion for summary judgment that its Cimzia® product, a humanized monoclonal...more

IP Newsflash - May 2014

Supplemental Information Containing Petitioner’s Statements Allowed in IPR - A PTAB panel has granted a patent owner’s (owner) motion to submit supplemental information in an inter partes review (IPR). A motion to...more

IP Newsflash - May 2014

District Court Cases - Statistics on Inter Partes Review Proceedings Found Persuasive by Court in Granting Stay - A district court in California has granted a defendant’s motion to stay a patent infringement...more

IP Newsflash - April 2014

Federal Circuit Cases - Denial of Petition for Inter Partes Review Is Not Appealable - A Federal Circuit panel has granted a motion to dismiss an appeal from a Patent Trial and Appeal Board (PTAB) order denying...more

IP Newsflash - April 2014

For the First Time, PTAB Rules for Patent Owner After Inter Partes Review Trial Instituted - A PTAB panel has held, for the first time, that all challenged claims of a patent are valid following completion of an inter...more

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