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Inter Partes Review (IPR) Proceeding Administrative Proceedings Prior Art

Fish & Richardson

PTAB Issues FAQs on Interim Process for Workload Management

Fish & Richardson on

Last week, the Patent Trial and Appeal Board (PTAB) issued a list of FAQs related to the new bifurcated process for discretionary denial established in the March 26 memorandum issued by Acting Director Stewart. The FAQs...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

The Goods on IP - September 2019: Design Patent PTO Litigation Statistics (through July 2019)

The statistics below reveal the current trends for proceeding breakdowns, institution rates, and outcomes of design patent PTO litigation proceedings. Three petitions were filed in January 2019, but none have been filed...more

Troutman Pepper Locke

Inter Partes Review of Pre-AIA Patents is Constitutional

Troutman Pepper Locke on

Celgene Corp. v. Peter, Appeal Nos. 2018-1167, -1168, -1169 (Fed. Cir. July 30, 2019) - Celgene owned two patents that pertained to methods of safely distributing potentially hazardous drugs.  The patents were challenged...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - May 2019: Board Immediately Distinguishes Precedential NHK Decision in Amazon Institution Decision

Just after making the NHK and Valve Corp decisions precedential, the Board distinguished them in Amazon. While NHK and Valve Corp resulted in denial, in Amazon the Board instituted trial despite Amazon having similar issues...more

BakerHostetler

Federal Circuit Looks to Provisional Patent Application in Determining Claim Scope

BakerHostetler on

Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ...more

McDonnell Boehnen Hulbert & Berghoff LLP

Genzyme Petitions Federal Circuit for Rehearing in Genzyme Therapeutic Products, Inc. v. Biomarin Pharmaceutical, Inc.

Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented...more

WilmerHale

IPR Motions to Amend: Rays of Hope Despite Gloomy Statistics

WilmerHale on

The America Invents Act permits patent owners to move to amend claims of a patent subject to inter partes review. However, attempts to amend claims have been largely unsuccessful to date, and some of the hurdles patent owners...more

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