On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the...more
8/20/2019
/ Appeals ,
Burden of Proof ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Remand ,
Vacated
A Patent Trial and Appeal Board (PTAB or Board) panel has determined that emailing a proposed amended complaint is not “service of a complaint” under 35 U.S.C. § 315(b).
On January 23, 2018, Aristocrat Technologies, Inc....more
The Federal Circuit has ruled that neither the exhaustion nor permissible repair doctrines allow manufacture of new replacement components covered by design patents.
The Automotive Body Parts Association (ABPA) sued Ford...more
A panel at the Patent Trial and Appeal Board (PTAB) recently considered whether to stay an ex parte reexamination proceeding where the patent was also the subject of a parallel inter partes review (IPR).
On September 11...more
The Federal Circuit vacated a PTAB decision invalidating claims of U.S. Patent No. 6,212,079 (the “’079 Patent”) on the grounds that the inter partes review (IPR) petition was time-barred as a result of a merger between the...more
The Patent Trial and Appeal Board (PTAB) has denied a petitioner’s request for inter partes review (IPR) finding that petitioner failed to demonstrate a reasonable likelihood of prevailing with respect to at least one...more
The Patent Trial and Appeal Board has denied a Petitioner’s request for institution of inter partes review (IPR) of claims that were added during ex parte reexamination because it found the IPR petitions were time-barred...more
The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board finding nonobvious the claims of U.S. Patent No. 7,772,209 (the “’209 Patent”), which are directed to a method of treating cancer.
The claims...more
5/13/2019
/ Appeals ,
Final Written Decisions ,
Food and Drug Administration (FDA) ,
Inter Partes Review (IPR) Proceeding ,
Method Claims ,
Motivation to Combine ,
Nonobvious ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Pharmaceutical Patents ,
Prior Art
The Patent Trial and Appeal Board (the “Board”) vacated its institution decision and terminated an inter partes review (IPR) filed by Mylan Pharmaceuticals, Inc. (“Mylan”) based on Mylan’s prior counterclaim seeking a...more
4/15/2019
/ Counterclaims ,
Declaratory Judgments ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Time-Barred Claims ,
Vacated ,
Voluntary Dismissals
The Federal Circuit reversed an inter partes review (IPR) decision holding that the Patent Trial and Appeal Board (the “Board”) incorrectly applied the standard for an inventor to prove diligence in reducing the invention to...more
In Ruiz Food Products, Inc. v. MacroPoint LLC, the Patent Trial and Appeal Board (PTAB) considered whether the time-bar provision of 35 U.S.C. § 315(a)(1) was triggered when a real party-in-interest had previously filed an...more
3/1/2019
/ Counterclaims ,
Declaratory Judgments ,
Dismissals ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prejudice ,
Real Party in Interest ,
Subject Matter Jurisdiction ,
Time-Barred Claims
In a recent final written decision, the Patent Trial and Appeal Board (PTAB) has determined that it was not unlawful for it to modify its institution decision following the SAS Supreme Court case.
In the PTAB proceeding,...more
In Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH, generic drug manufacturer Amerigen appealed a decision of the Patent Trial & Appeal Board finding UCB’s patent to certain chemical derivatives of diphenylpropylamines...more
1/28/2019
/ Abbreviated New Drug Application (ANDA) ,
Appeals ,
Article III ,
Generic Drugs ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prescription Drugs ,
Standing
A district court in California has granted-in-part a Plaintiff’s motion for summary judgment of no invalidity under 35 U.S.C. § 103 due to inter partes review (IPR) estoppel. During the pendency of the litigation, Defendants...more
1/14/2019
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motion for Summary Judgment ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art
The Patent Trial and Appeal Board (PTAB) has denied a petitioner’s motion to excuse the late filing of the exhibits to its petition for inter partes review (IPR). The PTAB found that the petitioner had failed to show good...more
The Southern District of New York has granted a motion in limine precluding evidence of Defendant’s failed inter partes review (IPR) petition.
The parties to the lawsuit are in the business of manufacturing and selling...more
The Federal Circuit has affirmed the final written decisions of a Patent Trial and Appeal Board (the “Board”) panel in six related inter partes review (IPR) proceedings. The Board held in those proceedings that (1) a...more
In an ongoing inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (the “Board”) denied Petitioner Nestlé Healthcare Nutrition, Inc.’s request to cross examine two expert witnesses after Patent Owner...more
11/19/2018
/ Cross Examination ,
Declaration ,
Discovery ,
Evidence ,
Expert Testimony ,
Expert Witness ,
Inter Partes Review (IPR) Proceeding ,
Motion to Exclude ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
The Federal Circuit has reversed a decision by the Patent Trial and Appeal Board (PTAB) that certain claims of U.S. Patent No. 8,865,921 (the “’921 Patent”) were not shown to be obvious, finding that the PTAB applied the...more
9/28/2018
/ Article III ,
Burden-Shifting ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Rebuttable Presumptions ,
Reversal ,
Standing
In Worlds Inc. v. Bungie, Inc., the Federal Circuit remanded an appeal from an inter partes review (“IPR”) instructing the Patent Trial and Appeal Board (“Board”) to reweigh the evidence in a manner that placed the ultimate...more
9/24/2018
/ Appeals ,
Burden of Persuasion ,
Burden of Proof ,
Collateral Estoppel ,
Final Written Decisions ,
Intellectual Property Agreements ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Remand ,
Time-Barred Claims ,
Video Games
Earlier this month, the Federal Circuit dismissed for lack of standing an appeal filed by an inter partes review (IPR) petitioner of a final written decision issued by the Patent Trial and Appeal Board (PTAB) that held two...more
8/30/2018
/ Appeals ,
Article III ,
Dismissals ,
Final Written Decisions ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
Prior Art ,
Standing
The Delaware District Court issued an order on June 7, 2018 denying a party’s motion to lift a stay following the Patent Trial and Appeal Board’s (PTAB) final written decision in a parallel inter partes review (IPR)...more
The Patent Trial and Appeal Board (“PTAB”) granted-in-part Patent Owner Twilio Inc.’s motion for additional discovery pursuant to 37 C.F.R. § 42.51(b)(2). Though the “Patent Owner delayed in seeking the requested discovery”...more
The Federal Circuit ruled that when a defendant is incorporated in a state that has multiple judicial districts, the defendant will reside in only one of the districts for venue purposes under the patent venue statute, 28...more
On May 14, 2018, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) Final Written Decision in an inter partes review (IPR) proceeding holding all claims of Anacor Pharmaceuticals, Inc.’s (“Anacor”)...more