The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board finding nonobvious the claims of U.S. Patent No. 7,772,209 (the “’209 Patent”), which are directed to a method of treating cancer.
The claims...more
5/13/2019
/ Appeals ,
Final Written Decisions ,
Food and Drug Administration (FDA) ,
Inter Partes Review (IPR) Proceeding ,
Method Claims ,
Motivation to Combine ,
Nonobvious ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Pharmaceutical Patents ,
Prior Art
The Patent Trial and Appeal Board (the “Board”) vacated its institution decision and terminated an inter partes review (IPR) filed by Mylan Pharmaceuticals, Inc. (“Mylan”) based on Mylan’s prior counterclaim seeking a...more
4/15/2019
/ Counterclaims ,
Declaratory Judgments ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Time-Barred Claims ,
Vacated ,
Voluntary Dismissals
The Federal Circuit reversed an inter partes review (IPR) decision holding that the Patent Trial and Appeal Board (the “Board”) incorrectly applied the standard for an inventor to prove diligence in reducing the invention to...more
In Ruiz Food Products, Inc. v. MacroPoint LLC, the Patent Trial and Appeal Board (PTAB) considered whether the time-bar provision of 35 U.S.C. § 315(a)(1) was triggered when a real party-in-interest had previously filed an...more
3/1/2019
/ Counterclaims ,
Declaratory Judgments ,
Dismissals ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prejudice ,
Real Party in Interest ,
Subject Matter Jurisdiction ,
Time-Barred Claims
In a recent final written decision, the Patent Trial and Appeal Board (PTAB) has determined that it was not unlawful for it to modify its institution decision following the SAS Supreme Court case.
In the PTAB proceeding,...more
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
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) has denied a petitioner’s motion to excuse the late filing of the exhibits to its petition for inter partes review (IPR). The PTAB found that the petitioner had failed to show good...more
The Southern District of New York has granted a motion in limine precluding evidence of Defendant’s failed inter partes review (IPR) petition.
The parties to the lawsuit are in the business of manufacturing and selling...more
The Federal Circuit has affirmed the final written decisions of a Patent Trial and Appeal Board (the “Board”) panel in six related inter partes review (IPR) proceedings. The Board held in those proceedings that (1) a...more
In an ongoing inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (the “Board”) denied Petitioner Nestlé Healthcare Nutrition, Inc.’s request to cross examine two expert witnesses after Patent Owner...more
11/19/2018
/ Cross Examination ,
Declaration ,
Discovery ,
Evidence ,
Expert Testimony ,
Expert Witness ,
Inter Partes Review (IPR) Proceeding ,
Motion to Exclude ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
The Federal Circuit has reversed a decision by the Patent Trial and Appeal Board (PTAB) that certain claims of U.S. Patent No. 8,865,921 (the “’921 Patent”) were not shown to be obvious, finding that the PTAB applied the...more
9/28/2018
/ Article III ,
Burden-Shifting ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Rebuttable Presumptions ,
Reversal ,
Standing
In Worlds Inc. v. Bungie, Inc., the Federal Circuit remanded an appeal from an inter partes review (“IPR”) instructing the Patent Trial and Appeal Board (“Board”) to reweigh the evidence in a manner that placed the ultimate...more
9/24/2018
/ Appeals ,
Burden of Persuasion ,
Burden of Proof ,
Collateral Estoppel ,
Final Written Decisions ,
Intellectual Property Agreements ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Remand ,
Time-Barred Claims ,
Video Games
Earlier this month, the Federal Circuit dismissed for lack of standing an appeal filed by an inter partes review (IPR) petitioner of a final written decision issued by the Patent Trial and Appeal Board (PTAB) that held two...more
8/30/2018
/ Appeals ,
Article III ,
Dismissals ,
Final Written Decisions ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
Prior Art ,
Standing
The Delaware District Court issued an order on June 7, 2018 denying a party’s motion to lift a stay following the Patent Trial and Appeal Board’s (PTAB) final written decision in a parallel inter partes review (IPR)...more
The Patent Trial and Appeal Board (“PTAB”) granted-in-part Patent Owner Twilio Inc.’s motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2). Though the “Patent Owner delayed in seeking the requested discovery”...more
The Federal Circuit ruled that when a defendant is incorporated in a state that has multiple judicial districts, the defendant will reside in only one of the districts for venue purposes under the patent venue statute, 28...more
On May 14, 2018, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) Final Written Decision in an inter partes review (IPR) proceeding holding all claims of Anacor Pharmaceuticals, Inc.’s (“Anacor”)...more
• The Supreme Court in Oil States v. Greene’s Energy ruled 7-2 that cancellation of patent claims in an inter partes review does not violate either Article III or the Seventh Amendment of the Constitution.
• In SAS...more
5/1/2018
/ America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Rights Doctrine ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
After nearly two years of patent litigation in dozens of cases in the United States and China, a Chinese trial court issued an injunction against Samsung, barring it from making or selling its 4G LTE smartphones in China—an...more
4/27/2018
/ Anti-Suit Injunctions ,
China ,
Cross-Licensing Agreement ,
FRAND ,
Huawei ,
Injunctions ,
Injunctive Relief ,
Patent Infringement ,
Patents ,
Popular ,
Samsung ,
Smartphones ,
Standard Essential Patents ,
Technology Sector
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
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
4/19/2018
/ Food and Drug Administration (FDA) ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Printed Publications ,
Prior Art ,
Reversal
In an order issued on April 4, 2018, Judge Lynn granted plaintiff ZitoVault’s motion for summary judgment under 35 U.S.C. 315(e)(2), holding that defendant IBM is estopped from asserting invalidity defenses based on prior art...more
4/18/2018
/ Amazon ,
Anticipation ,
Estoppel ,
Final Written Decisions ,
IBM ,
Inter Partes Review (IPR) Proceeding ,
Motion for Summary Judgment ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art
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
4/9/2018
/ Breach of Contract ,
Forum Selection ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
License Agreements ,
Patent Invalidity ,
Patent Royalties ,
Patent Trial and Appeal Board ,
Patents ,
Preliminary Injunctions
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