News & Analysis as of

Medical Devices Inter Partes Review (IPR) Proceeding

Knobbe Martens

PREVAIL Act Proposes Significant Changes PTAB Proceedings

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IP rights can be vital to the success of medical device companies.  Significant legislative changes governing some of these rights may be on the horizon.  Senators Coons (Delaware), Durbin (Illinois), Hirono (Hawaii), and...more

Morrison & Foerster LLP - Federal Circuitry

Recently in the Federal Circuit: The New Board Construction Conundrum

If you’ve ever wondered how they keep implanted medical devices from becoming dead weight when the batteries run out, this recent Federal Circuit decision addresses one solution—wireless charging through the skin! It also...more

Knobbe Martens

Federal Circuit Review - June 2023

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Objective Evidence in Determining Obviousness - In Medtronic, Inc. v. Teleflex Innovations, Appeal No. 21-2357, the Federal Circuit held that a close prima facie case of obviousness can be overcome by strong evidence of...more

Knobbe Martens

Analogous Art Must Be Compared to the Challenged Patent

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In Sanofi-Aventis Deutschland GmbH v. Mylan Pharm. Inc., Case No. 2021-1981, the Federal Circuit reversed an obviousness determination by the PTAB. At issue was Sanofi’s reissued U.S. Patent No. RE47,614 (the ’614 patent),...more

Knobbe Martens

Objective Evidence in Determining Obviousness

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MEDTRONIC, INC. v. TELEFLEX INNOVATIONS - Before Moore, Lourie, and Dyk.  Appeal from the Patent Trial and Appeal Board. Summary: A close prima facie case of obviousness can be overcome by strong evidence of objective...more

Rothwell, Figg, Ernst & Manbeck, P.C.

PTAB Agrees to Review Novartis’ Patent for an Ophthalmic Injection Syringe

On October 26, 2021, the Patent Trial and Appeal Board (PTAB) granted Regeneron’s petition to institute an inter partes review (IPR) of Novartis’s patent U.S. Pat. No. 9,220,631 (“the ’631 patent”), which covers a pre-filled...more

Knobbe Martens

Federal Circuit Reverses PTAB’s Invalidation of Patent Claims for an Artificial Heart Valve (Snyders vs St. Jude)

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On October 5, 2021, the U.S. Federal Circuit reversed a finding of invalidity by the Patent Trial and Appeal Board (PTAB) for patent claims related to an “artificial valve for repairing a damaged heart valve.”  ...more

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

PTAB Strategies and Insights Newsletter - June 2021

[co-authors: Patrick Murray, Risa Rahman, and Jae Bandeh] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return...more

McDermott Will & Emery

Doesn’t Scan: Skin Cancer Detection Device Just Combination of Familiar Elements

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The US Court of Appeals for the Federal Circuit overturned a finding of non-obviousness of certain claims relating to a device for the detection of skin cancer, finding that the Patent Trial & Appeal Board erred in applying...more

McDermott Will & Emery

Size Matters in Obviousness Analysis

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The US Court of Appeals for the Federal Circuit affirmed in part and reversed in part two Patent Trial and Appeal Board (Board) decisions, finding that the Board erred in its construction of certain claim terms relating to an...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2020 #3

Immunex Corp. v. Sanofi-Aventis U.S. LLC, Appeal Nos. 2019-1749, -1777 (Fed. Cir. Oct. 13, 2020) - In our Case of the Week, the Federal Circuit addressed the construction of the term “human antibodies.” In doing so, the...more

Fish & Richardson

POP Designates Two Discretionary Denial Decisions Precedential

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The Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) recently designated two decisions as precedential concerning the Board’s discretion to deny petitions for inter partes review (IPR) under § 325(d). The...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Life Sciences Report - February 2020

About the PTAB Life Sciences Report:  We will periodically report on developments at the PTAB involving life sciences patents. Abbott Laboratories v. Edwards Lifesciences Corp. PTAB Petition:  IPR2020-00480; filed January...more

Knobbe Martens

PTAB Institutes Inter Partes Review of Medtronic “Jervis” Patent

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On June 11, 2019, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) instituted inter partes review (IPR) of U.S. Patent No. 6,306,141, assigned to Medtronic Vascular, Inc. The Decision instituted the...more

WilmerHale

Federal Circuit Patent Updates - January 2019

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Barry v. Medtronic, Inc. (No. 2017-2463, 1/24/19) (Prost, Moore, Taranto) - Taranto, J. Affirming judgement of no invalidating public use of patents related to methods for correcting spinal column anomalies. Also...more

Knobbe Martens

Cook Medical Petitions for Inter Partes Review (IPR) of Medtronic “Jervis” Patent

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On November 9, 2018, Cook Medical LLC filed a petition with the Patent Trial and Appeal Board requesting inter partes review (IPR) of U.S. Patent No. 6,306,141, assigned to Medtronic Vascular, Inc. The ‘141 Patent is...more

Knobbe Martens

Patent Law Update for Medical Device Companies 2018 (Presentation)

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Knobbe Martens Partners Paul Conover, Irfan Lateef, and Curtis Huffmire presented "Patent Law Update for Medical Device Companies 2018" at the MedTech Innovation Summit in San Francisco, CA on November 28, 2018. This session...more

McDermott Will & Emery

The Parade of Horribles Fallacy: § 285 Attorneys’ Fees Implicit Notice Requirement

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The US Court of Appeals for the Federal Circuit affirmed a district court’s denial of attorneys’ fees, finding that the district court did not abuse its discretion in concluding that a medical device company’s failure to...more

Morrison & Foerster LLP

Top Developments in Hatch-Waxman Litigation for April 2018

This month, we highlight several significant cases including Celgene Corp. v. Hetero Labs Ltd. and Regeneron Pharmaceuticals, Inc. v. Merus N.V. as well as new legislation proposed in both houses of Congress with respect to...more

Jones Day

Petitioners Must Explain Combining Multiple Embodiments of Reference in Obviousness Argument

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In a series of recent decisions, the PTAB denied institution on a dozen petitions on related patents because of one problem it identified in the petitioner’s arguments. All of the petitioner’s proposed grounds challenged the...more

Robins Kaplan LLP

Lessons for Life Science and Medical Device Companies Post-Nautilus

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Under the U.S. Patent laws, claims must particularly point out and distinctly claim what the inventor understands her invention to be. Up until three years ago, the inquiry for determining indefiniteness was to ask whether...more

Goodwin

Section 337 Actions at the ITC: another forum for pharma and biosimilars litigation?

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With the growing volume of biosimilar and pharma litigation in district courts and before the PTAB, the U.S. International Trade Commission may emerge as another forum for patent holders against imported biosimilars. Section...more

Knobbe Martens

New Video Resources on Inter Partes Review (IPRs)

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Since 2012, Inter Partes Review (“IPR”) has emerged as one of the most significant new procedures in patent law. An IPR is a proceeding in the Patent Office, and allows a party to challenge an issued patent on certain prior...more

WilmerHale

Federal Circuit Patent Updates - October 2016

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Medtronic, Inc. v. Robert Bosch Healthcare (No. 2015-1977, -1986, -1987, 10/20/16) (Lourie, Dyk, Hughes) - Dyk, J. Denying petition for rehearing and confirming the Court's earlier order. “The Board's vacatur of its...more

Sheppard Mullin Richter & Hampton LLP

Post-Grant Review Roils Patent Litigation Waters

The America Invents Act (AIA) has had a profound impact on patent litigation, particularly surrounding inter partes and other post-grant proceedings. Below, Manish K. Mehta, who handles patent litigation across an array of...more

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