New Developments in Obviousness-Type Double Patenting and Original Patent Requirements — Patents: Post-Grant Podcast
Inter Partes Review: Validity Before the PTAB
SAGE PRODUCTS, LLC v. STEWART [OPINION] - Before Reyna, Cunningham, and Stark. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. The Board did not abuse its discretion by relying on...more
The Federal Circuit affirmed six PTAB decisions that held unpatentable as obvious 79 claims of three Cytiva Bioprocess (“Cytiva”) challenged patents and reversed the PTAB decision upholding four claims....more
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
M & K HOLDINGS, INC. v. SAMSUNG ELECTRONICS CO., LTD. Before Moore, Bryson, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: Title-searchable publications shared on a prominent standards-setting...more
VIDSTREAM LLC V. TWITTER, INC. Before Newman, O’Malley, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Evidence of a prior art reference’s publication date submitted after an IPR petition may be...more
274-1 Federal Circuit Revisits American Axle & Manufacturing; Case Remanded to Determine if One of the “Hooke’s Law” Claims is Ineligible under Other Theories of Eligibility - The Federal Circuit recently issued a modified...more
Non-Infringement Need Not Be “Actually Litigated” To Shield Accused Products From Infringement Liability In Subsequent Actions - In In Re Personal Web Technologies LLC, Appeal No. 19-1918, the Federal Circuit ruled that the...more
Koninklijke Philips N.V. v. Google LLC et al., Appeal No. 2019-1177 (Fed. Cir., January 30, 2020). Google filed an IPR against Philips’ patent relating to a method of forming a media presentation on a client device from...more
As previously reported, earlier this year Fresenius filed a petition for inter partes review of claims 9-10, 13-21 and 23-30 of Amgen’s pegfilgrastim patent – U.S. Patent No. 9,643,997 (“997 patent”). The challenged claims of...more
On December 6, 2019, the Federal Circuit will hear oral argument in a rituximab-related appeal by Biogen. The appeal stems from a final written decision of the Patent Trial and Appeal Board (PTAB) in an inter partes review...more
Though politics ruled the headlines in 2016, the year still brought big changes in intellectual property law and its application, most notably in patent subject matter eligibility, inter partes review institution and appeal...more
On November 25, 2016, patent owner Celgene Corporation (“Celgene”) filed a Request for Rehearing in response to the Patent Trial and Appeal Board’s (PTAB) final written decision rendering unpatentable claims to U.S. Patent...more
The Patent Trial and Appeal Board (PTAB or Board) reversed its previous decision invalidating claims of a patent covering a coaxial cable connector after the US Court of Appeals for the Federal Circuit found that the PTAB...more
The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same...more
On October 27, 2016, the PTAB issued four final written decisions invalidating claims of U.S. Patent No. 6,045,501 (“the ’501 Patent”) and U.S. Patent No. 6,315,720 (“the ’720 Patent”), covering Celgene’s Pomalyst® and...more
Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more
Addressing issues of obviousness, the US Court of Appeals for the Federal Circuit affirmed a finding of obviousness based on a flexible approach and further clarified the appropriate evaluation of secondary considerations...more
Since the advent of AIA post grant practice four years ago, only 26 inter partes review petitions have been filed for design patents.1 The Patent Trial and Appeal Board issued 23 institution decisions, instituted 10 of those...more
Last week, in Arendi S.A.R.L. v. Apple, the Federal Circuit reversed a Patent Trial and Appeal Board (PTAB) finding of invalidity in an inter partes review that relied on “common sense” to supply a claim limitation that was...more
In July of 2015, Sanofi filed petition for an inter partes review (IPR2015-01624) for 15 claims of U.S. Pat. No. 6,331,415 (“Cabilly II”). In the antibody field, the Cabilly family of patents is well known and is believed to...more
In September 2012, inter partes review (IPR) and covered business method (CBM) patent review procedures launched at the Patent Trial and Appeal Board (PTAB). Proponents of these processes believed that a PTO-affiliated forum...more