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Results from Phase I and II Clinical Trials and Pending Phase III Clinical Trial Insufficient to Render Obvious Method of Treating...

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

Overlooked PTAB Cases: Raising Nonobviousness Evidence

Objective evidence of nonobviousness traces its roots to 19th century case law from the U.S. Supreme Court. The analysis of such secondary considerations as commercial success, failure of others, and long-felt but...more

No IPR Estoppel Despite Purportedly “Gratuitous” Inclusion of Physical Device in Invalidity Defenses

A district court has ruled that the statutory estoppel arising from an inter partes review (IPR) proceeding does not apply to anticipation and obviousness defenses that rely significantly on a physical device. The court also...more

PTAB’s Claim Construction Not Binding on District Court Despite Affirmance by Federal Circuit of PTAB’s Unpatentability...

An accused infringer in a district court case could not take advantage of a prior claim construction ruling from an inter partes review (IPR) proceeding involving unasserted claims of the same patent. The Patent Trial and...more

On Remand, PTAB Reaches Opposite Conclusion and Finds that Patent Owner Successfully Antedated Key Prior Art Reference

In a remanded inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB) held that Patent Owner Intellectual Ventures II LLC had successfully antedated a prior art reference asserted by Petitioner Motorola...more

Far-Reaching Effect of IPR Estoppel Dooms Invalidity Defense Based on Prior Art Product

Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...more

PTAB Casts Doubt on Judicial Estoppel Challenge at Institution Stage of IPR But Does Not Foreclose it for Trial

The Patent Trial and Appeal Board (PTAB) has rejected a patent owner’s argument that judicial estoppel should prevent a petitioner from making obviousness arguments in support of its petition for inter partes review (IPR)....more

PTAB Strikes from IPR Record References Introduced After Institution that Purportedly Showed State of the Art

The Patent Trial and Appeal Board has granted in part a Patent Owner’s motion to strike Petitioner’s Reply for improperly raising new arguments and citing new evidence. The Board, however, declined to throw out the entirety...more

Preliminary Injunction Granted Due to Weakened Invalidity Defense in Light of Inter Partes Review Decision

A judge in the Northern District of California has enjoined a group of defendants from selling a laboratory DNA sequencing machine. The plaintiff first asserted the patent against one defendant in litigation in the District...more

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