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IPR Grounds Doomed for Failure to Show Patent Reference Was Supported by Disclosures in Priority Application

The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more

PGR Challenge to Genus Claims Fails Because of Enabling Disclosure of Species in Pre-AIA Priority Applications

The Patent Trial and Appeal Board has denied institution of a post-grant review proceeding because the petitioner failed to show the challenged patent was eligible for PGR. The PTAB ruled that the petitioner’s evidence,...more

Failure to Identify Prior Art Disclosure of a Limiting Preamble Dooms IPR Petition

The Patent Trial and Appeal Board denied institution of a petition for inter partes review (IPR), in part because an allegedly anticipatory prior art patent lacked an element of what the board determined was a limiting...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

N.D. Ill.: Neither Statutory Estoppel nor “Misleading” Statements Regarding Its Scope Sufficient to Knock Out Invalidity Defenses

A district court has ruled that the scope of IPR estoppel under 35 U.S.C. § 315(e)(2) did not apply to invalidity grounds that relied on physical products. The court also declined to apply judicial estoppel, notwithstanding...more

PTAB: Patent Owner’s Burden Regarding a Showing of Priority Is Strictly Circumscribed by the Extent of Petitioner’s Challenge in...

A petition for inter partes review (IPR) has been denied because the petitioner failed to rebut the patent owner’s claim of priority raised in its preliminary response. In denying institution, the Patent Trial and Appeal...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

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

PTAB Finds Copyright Notice and Catalog Listing Insufficient as Proof of Public Availability

A Patent Trial and Appeal Board (PTAB) panel has denied institution of an inter partes review proceeding because the petitioner did not establish that key references were properly qualified as printed publications under 35...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

IP Newsflash - April 2016

FEDERAL CIRCUIT - Federal Circuit Lacks Authority to Review Denial of Institution of IPR on Some, but Not All, Raised Grounds - In an appeal of a decision by the Patent Trial and Appeal Board (PTAB) denying the...more

IP Newsflash - August 2015 #3

DISTRICT COURT CASES - Attorney’s Fees Awarded Against Plaintiff for Inadequate Pre-Filing Investigation and Meritless Post-Discovery Positions - A judge in the U.S. District Court for the Central District of...more

IP Newsflash - August 2015 #2

FEDERAL CIRCUIT CASES - Federal Circuit Quashes $287 Million Enhanced Damages Award Finding Objectively Reasonable Defenses Raised During Litigation - The Federal Circuit has reversed a district court’s award of...more

IP Newsflash - August 2015

DISTRICT COURT CASES - Humanized Antibody Not Found to Infringe Under DOE - A district court judge granted UCB, Inc.’s (plaintiff) motion for summary judgment that its Cimzia® product, a humanized monoclonal...more

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