The Patent Trial and Appeal Board has granted a petitioner’s motion to submit supplemental information, over patent owner’s objections, concerning the public availability of references that were relied upon to support grounds...more
In a final written decision of an inter partes review proceeding, the Patent Trial and Appeal Board found all 12 claims of a challenged patent unpatentable as either anticipated or obvious. Each ground of unpatentability...more
10/10/2023
/ Anticipation ,
Clinical Trials ,
Obviousness ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prior Art
In an ANDA case in the District of Delaware, the court has rejected an obviousness challenge to a patented method of increasing survival in patients having prostate cancer. The court found that early clinical trial results...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 Patent Trial and Appeal Board granted a request for rehearing of a final written decision in which it had originally determined that the challenged were not unpatentable. On rehearing, the board found that petitioner’s...more
The Patent Trial and Appeal Board denied a petition to institute inter partes review, finding there was no reasonable likelihood that petitioners would prevail on their obviousness challenges. In rendering its decision, the...more
A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan. The patent at issue related to a...more
In a recent inter partes review proceeding, the Patent Trial and Appeal Board relied on compelling evidence of secondary considerations to hold all challenged claims not unpatentable under 35 U.S.C. § 103. Specifically, the...more
In an inter partes review, the Patent Trial and Appeal Board applied guidance from the U.S. Patent and Trademark Office and declined to consider an obviousness ground that was based on admissions about prior art in the...more
In a rare move, the interim Director of the U.S. Patent Office granted review of a final written decision in an inter partes review proceeding. In its request for Director review, the patent owner argued that the Patent Trial...more
The Patent Trial and Appeal Board denied a patent owner’s motion for additional discovery of documents—from petitioners, real parties-in-interest, and third parties—because patent owner failed to show that such discovery...more
Objective evidence of nonobviousness traces its roots to 19th century case law from the U.S. Supreme Court.
The analysis of such secondary considerations as commercial success, failure of others, and long-felt but...more
In a recent decision issued in Louisiana-Pacific Corp. v. Huber Engineered Woods LLC, the Patent Trial and Appeal Board addressed the showing that a petitioner for inter partes review must make to demonstrate that an asserted...more
In a recent inter partes review (IPR), a patent owner overcame a facially persuasive obviousness challenge by relying on evidence from an earlier litigation to establish objective indicia of nonobviousness.
In RTI...more
A district court has ruled that the statutory estoppel arising from an inter partes review (IPR) proceeding does not apply to anticipation and obviousness defenses that rely significantly on a physical device. The court also...more
An accused infringer in a district court case could not take advantage of a prior claim construction ruling from an inter partes review (IPR) proceeding involving unasserted claims of the same patent. The Patent Trial and...more
In a remanded inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB) held that Patent Owner Intellectual Ventures II LLC had successfully antedated a prior art reference asserted by Petitioner Motorola...more
A recent ruling from the Patent and Trial Appeal Board (PTAB) highlights the critical role that collateral estoppel (also known as issue preclusion) can play in inter partes review (IPR) proceedings. In a final written...more
Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...more
2/3/2020
/ Estoppel ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Printed Publications ,
Prior Art ,
Summary Judgment
The Patent Trial and Appeal Board (PTAB) has rejected a patent owner’s argument that judicial estoppel should prevent a petitioner from making obviousness arguments in support of its petition for inter partes review (IPR)....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
The Patent Trial and Appeal Board has granted in part a Patent Owner’s motion to strike Petitioner’s Reply for improperly raising new arguments and citing new evidence. The Board, however, declined to throw out the entirety...more
10/14/2019
/ Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Motion To Strike ,
Obviousness ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Petitioner Reply Briefs ,
Prior Art ,
SAS Institute Inc. v Iancu ,
State of the Art Defense
The Federal Circuit recently overturned the Patent Trial and Appeal Board’s (PTAB) determination that claims covering a cancer treatment method were obvious.
The patent at issue is directed to a method of treating...more
On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the...more
8/20/2019
/ Appeals ,
Burden of Proof ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Remand ,
Vacated
In Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH, generic drug manufacturer Amerigen appealed a decision of the Patent Trial & Appeal Board finding UCB’s patent to certain chemical derivatives of diphenylpropylamines...more
1/28/2019
/ Abbreviated New Drug Application (ANDA) ,
Appeals ,
Article III ,
Generic Drugs ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prescription Drugs ,
Standing