The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation. On...more
The Patent Trial and Appeal Board instituted an inter partes review over patent owner’s objections that the petition did not timely identify all real parties-in-interest (RPI) and was filed by a phantom legal entity after...more
7/29/2024
/ California ,
Delaware ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Limited Liability Company (LLC) ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Reorganizations
A court in the Western District of Oklahoma dismissed a complaint as to one of the asserted patents where the patent included a terminal disclaimer stating that the patent would be enforceable only as long as it was co-owned...more
The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more
The United States Patent and Trademark Office (USPTO) and the United Kingdom Intellectual Property Office (UKIPO) have signed a memorandum of understanding (MoU) that outlines a new framework for collaboration between the two...more
The Patent Trial and Appeal Board denied institution of a petition for inter partes review under 35 U.S.C. § 315(b) because the petition was filed more than one year after patent owner had served a complaint for patent...more
In keeping with precedent, a judge in the District of Delaware issued an oral order restricting the extent of permissible activities for litigation counsel before the Patent Trial and Appeal Board. The order resolved a...more
The Patent Trial and Appeal Board has denied institution and joinder of an inter partes review petition after determining that the petition was not only time-barred but that joinder was also foreclosed. In making its...more
The USPTO Director vacated a Patent Trial and Appeal Board decision denying institution of inter partes review for not addressing alleged differences between references in the petition and those considered during prosecution....more
The Director of the U.S. Patent and Trademark Office vacated and remanded a decision from the Patent Trial and Appeal Board discretionarily denying institution of an inter partes review petition. The Director concluded that...more
The Patent Trial and Appeal Board denied institution of a petition for IPR after determining that the petitioner failed to show a reasonable likelihood that its primary asserted reference, which was available through the...more
Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of...more
The Patent Trial and Appeal Board denied institution of an inter partes review after determining that petitioner failed to establish public availability of a prior art reference based on an alleged publication date listed in...more
Summary -
Last year the World Intellectual Property Organization (WIPO), under a threat of a vote, accelerated negotiations on an international legal instrument related to intellectual property (IP) and genetic resources...more
10/31/2023
/ Biotechnology ,
Comment Period ,
Deadlines ,
Genetic Materials ,
Intellectual Property Protection ,
International Harmonization ,
Life Sciences ,
Patent Law Treaty ,
Patents ,
Pharmaceutical Industry ,
USPTO ,
WIPO
The Patent Trial and Appeal Board rejected a patent owner’s argument that the Board should exercise its discretion to deny a petitioner’s inter partes review (IPR) petition because Petitioner failed to name a time-barred real...more
The Western District of Texas recently denied a defendant’s motion to stay pending inter partes review based in part on the defendant’s status as a non-party in the IPR proceedings. In doing so, the district court focused on...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 has denied a patent owner’s motion to terminate an inter partes review proceeding finding that the unidirectional nature of estoppel under 35 U.S.C. § 315(e) renders common-law claim...more
In a decision denying summary judgment, the District of Massachusetts weighed in on an unsettled issue: whether after receiving a final written decision in an inter partes review, a patent challenger is permitted to raise...more
The Patent Trial and Appeal Board (PTAB) granted Petitioner’s motions to sanction Patent Owner for failure to meet its duty of candor and fair dealing in five related inter partes review proceedings. The PTAB found that...more
In an appeal from the United States District Court for the Western District of Washington, the Federal Circuit confirmed that on the issue of inter partes review (IPR) estoppel, the burden of proof rests on the patentee to...more
The Federal Circuit has reversed the District of Delaware’s ruling that added an inventor to a patent. The Federal Circuit found that the contribution by the added inventor was not significant when measured against the...more
In a sua sponte review, USPTO Director Kathy Vidal continued her refinement of the PTAB’s “discretionary denial” practice. Specifically, the Director vacated the Board’s decision to deny institution in Volvo Penta of the...more
The Patent Trial and Appeal Board recently instituted an inter partes review where the patent owner argued that the petitioner failed to establish its expert as a person of skill in the art, which would have rendered the...more