News & Analysis as of

Prior Art

Prior Art Chemical Structures Must Be More Than A “Code Name”

by Jones Day on

The PTAB recently rejected a request for rehearing by Bayer CropScience LP (“Bayer”). Bayer Cropscience LP, v. Syngenta Limited, IPR2017-01332, Paper 15 (P.T.A.B. Apr. 2, 2018). The PTAB stated that when the prior art does...more

Apator Miitors APS v. Kamstrup A/S

by Knobbe Martens on

Federal Circuit Summaries - Before Moore, Linn, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: A party seeking to swear behind prior art using an inventor’s testimony must proffer corroborating...more

MPEP Update: New Guidance Regarding Effective Prior Art Dates Under § 102(e)

On April 5, 2018, the U.S. Patent and Trademark Office (“USPTO”) revised MPEP § 2136.03 to provide additional guidance regarding the effective prior art dates of references cited under pre-AIA 35 U.S.C. § 102(e). Pre-AIA §...more

In Rare Decision, PTAB Grants Request for Rehearing, Reverses its Prior Decision, and Institutes IPR

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

Massachusetts Court Finds Shaw Decision Forecloses Any Estoppel Beyond the Grounds That Were Instituted in an IPR, Despite Policy...

by Knobbe Martens on

The court in Koninklijke Philips N.V. v. Wangs All. Corp., No. 14:cv-12298, 2018 WL 283893 (D. Mass. Jan. 2, 2018) denied summary judgement of no invalidity, finding that the Federal Circuit’s holding in Shaw forecloses a...more

Accused Infringer Estopped from Asserting Prior Art Disclosed in Invalidity Contentions

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

Defendant Is Not Estopped from Relying on a Prior Art Reference in District Court that Is Related to a Reference Used in a CBM So...

by Knobbe Martens on

In Solutran, Inc. v. U.S. Bancorp & Elavon, Inc., No. 13:cv-02637, 2018 WL 1276999 (D. Minn. Mar. 12, 2018), the court denied the plaintiff’s Motion in Limine and held that CBM estoppel does not apply to related applications...more

PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office

by Knobbe Martens on

On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more

USPTO Says Overlapping Range In Prior Art Insufficient to Invalidate Method of Treatment Patent

by Dechert LLP on

Pharmaceutical patents frequently claim treatment methods that utilize a range of amounts or concentrations for the active ingredient or excipients included in the formulation. Given the prevalence of such patents, there is...more

In Re: Power Integrations, Inc.

by Workman Nydegger on

The broadest reasonable interpretation of a claim term cannot be uncoupled from the specification or render the term meaningless in the claim...more

Celltrion Moves for Summary Judgment in Janssen v. Celltrion

by Goodwin on

Last week, in the ongoing Janssen v. Celltrion litigation concerning Celltrion’s Inflectra®, a biosimilar of Janssen’s Remicade® (infliximab), Judge Wolf of the U.S. District Court for the District of Massachusetts granted...more

Not So Secondary: Overcoming Obviousness With Objective Indicia

by Jones Day on

On April 2, 2018, the PTAB issued a final written decision in Fox Factory finding that the petitioner failed to carry its burden in showing the instituted claims were unpatentable as obvious. Fox Factory, Inc. v. SRAM, LLC,...more

Federal Circuit Review - March 2018

by Knobbe Martens on

Distribution Agreements Can Constitute Offers for Sale Under Section 102(b) - In The Medicines Company v. Hospira, Inc., Appeal Nos. 2014-1469, 2014-1504, the Federal Circuit held that a distribution agreement qualified as...more

French Cour de Cassation Clarifies Requirement of Plausibility

by Jones Day on

The Decision: The French Cour de cassation, in a case concerning a dosage regime patent, recently clarified the "plausibility" requirement, an element of sufficiency of disclosure or inventive step. The Result: The wording...more

PTAB Designates Two Decisions Declining Review Under § 325(d) as Informative

by Jones Day on

On March 21, 2018 the PTAB issued a press release announcing that two decisions denying review under 35 U.S.C. § 325(d) are designated as informative: Kayak Software Corp.v. International Business Machines Corp.,...more

Protecting Artificial Intelligence and Big Data Innovations Through Patents: Functional Claiming

by Jones Day on

The Situation: Artificial intelligence ("AI") and big data ("BD") innovations are driving forces of the current technological revolution, dramatically changing the way we search for information, communicate, operate devices,...more

Fresh From the Bench: Latest Federal Circuit Court Cases

Oracle America, Inc. v. Google LLC, Appeal No. 2017-1118, -1202 (Fed. Cir. 2018) - In an appeal from a jury trial, the Federal Circuit reversed the District Court’s decision denying Oracle’s motion for JMOL and remanded...more

Anticipation by Combining Elements from the Four Corners of a Reference

by Jones Day on

In a January 12 article, Anticipation Requires More Than A Reference That Discloses All The Elements, we discussed the Microsoft Corp v. Biscotti, Inc. case, where the Federal Circuit affirmed a decision of the PTAB finding...more

Part III: Another update on IPR estoppel in the Courts and at the PTAB

by Thompson Coburn LLP on

In March 2017, I reported on the shifting standard for estoppel in inter partes review (IPR) proceedings. See The shifting standard for IPR estoppel: Where are we now? In September 2017, I provided another update. See An...more

Drafting Effective Blockchain Patents

As the number of blockchain-based patents and patent applications increases, more companies have become interested in pursuing these patents. Other companies still think that blockchain-based inventions are not patentable....more

Knee Brace Patent Application Gets a Leg Up

by McDermott Will & Emery on

Finding that the Patent Trial and Appeal Board (PTAB) erred in rejecting patent claims after improperly construing an apparatus claim element by ignoring what it deemed to be a recited method step, the US Court of Appeals for...more

In Re: Gregory A. Brandt, John B. Letts, Firestone Building Products Company, LLC

by Knobbe Martens on

Federal Circuit Summaries - Before Lourie, Reyna, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: A prima facie case of obviousness is established where the claimed range abuts a range disclosed in...more

Additional Discovery of Clinical Trial Data in Inter Partes Review

by BakerHostetler on

In Apotex, Inc. et al. v. Novartis AG (IPR 2017-00854, paper 47 dated Feb. 5, 2018), petitioner Apotex sought, and was granted, discovery of a Phase III clinical trial protocol from patent owner Novartis. The patent at...more

Complaint Sheltered From Dismissal In Patent Row Over Personal Tents

A recent opinion from Judge Shea in the District of Connecticut sheds important light on the sufficiency of pleadings in declaratory judgment patent cases. Noting that declaratory judgment actions are of particular...more

Federal Circuit Provides Guidance on Obviousness of a Claimed Range of Values

by Jones Day on

Patent applicants often draft claims to cover various ranges of physical or chemical characteristics. Of primary concern during prosecution are prior art documents that disclose similar, but not overlapping, ranges. In In re...more

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