News & Analysis as of

Patent Trial and Appeal Board Medical Devices

A&O Shearman

Federal Circuit Invalidates Patent For Angioplasty Catheter Based On Applicant Admitted Prior Art

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The Federal Circuit recently issued a precedential decision in Shockwave Med., Inc. v. Cardiovascular Sys., Inc. (CSI), affirming-in-part and reversing-in-part the Patent Trial and Appeal Board’s (PTAB) decision, and...more

Knobbe Martens

Coloring Within the Lines: The Genericness Test for Color Trademarks

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IN RE: PT MEDISAFE TECHNOLOGIES - Before Prost, Clevenger, and Stark. Appeal from the Trademark Trial and Appeal Board. A proposed color mark was found generic where the relevant public perceived the color to be a common...more

Proskauer - The Patent Playbook

Discretionary Denials in Action: iRhythm Technologies Inc. v. Welch Allyn Inc.

The U.S. Patent and Trademark Office (“USPTO”) Acting Director’s recent decision to deny institution of inter partes review (“IPR”) in iRhythm Technologies Inc. v. Welch Allyn Inc. offers valuable lessons for both patent...more

Proskauer - The Patent Playbook

Navigating Parallel Proceedings: Lessons Learned As Time Runs Out for AliveCor in its Apple Smartwatch Patent Dispute

On March 7, 2025, the Federal Circuit issued a decision resolving the ongoing patent litigation between AliveCor and Apple concerning methods of cardiac monitoring purportedly employed in certain of Apple’s Watches. The...more

McDonnell Boehnen Hulbert & Berghoff LLP

Recor Medical, Inc. v. Medtronic Ireland Mfg. (Fed. Cir. 2025)

The inter partes review provisions of the Leahy-Smith America Invents Act have been criticized for the propensity of the Patent Trial and Appeal Board (PTAB) to find invalid all or at least some of the challenged claims,...more

Venable LLP

Venable’s BiologicsHQ Monthly Injection - December 2024

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Welcome to Venable’s BiologicsHQ Monthly Injection - December 2024....more

Knobbe Martens

PREVAIL Act Proposes Significant Changes PTAB Proceedings

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IP rights can be vital to the success of medical device companies.  Significant legislative changes governing some of these rights may be on the horizon.  Senators Coons (Delaware), Durbin (Illinois), Hirono (Hawaii), and...more

Morrison & Foerster LLP - Federal Circuitry

Recently in the Federal Circuit: The New Board Construction Conundrum

If you’ve ever wondered how they keep implanted medical devices from becoming dead weight when the batteries run out, this recent Federal Circuit decision addresses one solution—wireless charging through the skin! It also...more

Knobbe Martens

Federal Circuit Review - June 2023

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Objective Evidence in Determining Obviousness - In Medtronic, Inc. v. Teleflex Innovations, Appeal No. 21-2357, the Federal Circuit held that a close prima facie case of obviousness can be overcome by strong evidence of...more

Knobbe Martens

Analogous Art Must Be Compared to the Challenged Patent

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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

Knobbe Martens

Objective Evidence in Determining Obviousness

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MEDTRONIC, INC. v. TELEFLEX INNOVATIONS - Before Moore, Lourie, and Dyk.  Appeal from the Patent Trial and Appeal Board. Summary: A close prima facie case of obviousness can be overcome by strong evidence of objective...more

Knobbe Martens

Developments in Patent Disputes Between Apple and AliveCor

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Earlier this year, AliveCor, Inc., a medical device and AI company producing electrocardiogram (ECG) hardware and software for consumer mobile devices, succeeded in convincing an International Trade Commission (ITC) judge...more

Fish & Richardson

What to Know About the USPTO’s Duty of Candor Guidance Regarding FDA Submissions

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​​​​​​​By now you have seen multiple reports discussing the PTO’s Notice of July 29, 2022, relating to the duties of candor and good faith. Federal Register, Vol. 87, No. 145, July 29, 2022....more

MoFo Life Sciences

Recent Biden Administration Efforts On Drug Pricing: USPTO Notice Focuses On Eliminating Inconsistencies In USPTO/FDA Statements

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On July 29, 2022, the U.S. Patent and Trademark Office (USPTO) issued a Notice in the Federal Register clarifying the duty of disclosure that may keep patent practitioners up at night. The Notice reminds applicants of the...more

Knobbe Martens

USPTO Issues Notice Regarding Patent Examinations and FDA Submissions

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On July 29, 2022, the United States Patent and Trademark Office (USPTO) issued a Notice by Director Kathy Vidal that may be relevant to those seeking or holding patents on medical devices that require Food and Drug...more

Rothwell, Figg, Ernst & Manbeck, P.C.

PTAB Agrees to Review Novartis’ Patent for an Ophthalmic Injection Syringe

On October 26, 2021, the Patent Trial and Appeal Board (PTAB) granted Regeneron’s petition to institute an inter partes review (IPR) of Novartis’s patent U.S. Pat. No. 9,220,631 (“the ’631 patent”), which covers a pre-filled...more

Knobbe Martens

Federal Circuit Reverses PTAB’s Invalidation of Patent Claims for an Artificial Heart Valve (Snyders vs St. Jude)

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On October 5, 2021, the U.S. Federal Circuit reversed a finding of invalidity by the Patent Trial and Appeal Board (PTAB) for patent claims related to an “artificial valve for repairing a damaged heart valve.”  ...more

Proskauer - The Patent Playbook

Prior Art Showing An Invention To Be “At Least Possible” Found Sufficient To Invalidate Surgical Device Patent

On August 23rd, the Federal Circuit upheld in part and reversed in part a decision from the Patent Trial and Appeal Board’s (PTAB or Board) concerning Ethicon’s patent on a robotic surgical tool, holding that the Board’s...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights Newsletter - June 2021

[co-authors: Patrick Murray, Risa Rahman, and Jae Bandeh] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return...more

McDermott Will & Emery

Doesn’t Scan: Skin Cancer Detection Device Just Combination of Familiar Elements

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The US Court of Appeals for the Federal Circuit overturned a finding of non-obviousness of certain claims relating to a device for the detection of skin cancer, finding that the Patent Trial & Appeal Board erred in applying...more

Cooley LLP

Alert: Orange Book Transparency Act Creates Some New Obligations

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The Orange Book Transparency Act of 2020, signed into law on January 5, amends section 505(j) of the Federal Food, Drug and Cosmetic Act, codifying and clarifying some patent listing requirements of existing FDA regulations....more

Troutman Pepper Locke

Federal Circuit Review - Issue 282

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282-1 Federal Circuit Opines on Printed Matter Doctrine and Reverses District Court Decision Holding Medical Device Patent Invalid and Noninfringed - The United States Court of Appeals for the Federal Circuit recently...more

McDermott Will & Emery

Size Matters in Obviousness Analysis

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The US Court of Appeals for the Federal Circuit affirmed in part and reversed in part two Patent Trial and Appeal Board (Board) decisions, finding that the Board erred in its construction of certain claim terms relating to an...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2020 #3

Immunex Corp. v. Sanofi-Aventis U.S. LLC, Appeal Nos. 2019-1749, -1777 (Fed. Cir. Oct. 13, 2020) - In our Case of the Week, the Federal Circuit addressed the construction of the term “human antibodies.” In doing so, the...more

Fish & Richardson

POP Designates Two Discretionary Denial Decisions Precedential

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The Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) recently designated two decisions as precedential concerning the Board’s discretion to deny petitions for inter partes review (IPR) under § 325(d). The...more

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