February 7, 2020 – ArticleClaim Indefiniteness To Provide An End Around SAS?In Samsung Electronics America, Inc. v. Prisua Engineering Corp., the Fed. Cir. confirmed that, outside of the context of a motion to amend, the PTAB cannot cancel claims for indefiniteness in an IPR proceeding. Specifically, the Court found that if the PTAB cannot ascertain the scope of a claim with reasonable certainty for purposes of assessing patentability, the proper course for the PTAB to follow "is to decline to institute the IPR or, if the indefiniteness issue affects only certain claims, to conclude that it could not reach a decision on the merits with respect to whether petitioner had established the unpatentability of those claims under sections 102 or103. It would not be proper for the Board to cancel claims on a ground that is unavailable in an IPR." More
December 9, 2019 – ArticleMotions to Amend in Inter Partes Review: Why did Ethicon Cut Against the Grain?Motions to amend (MTAs) are generally disfavored. The prevailing approach calls for patentees to file an MTA in Inter Partes Review (IPR) only in limited circumstances. In particular, most patentees are moving to narrow or clarify claim scope via an MTA only in cases where (i) there is no related application pending at the Office and (ii) the specter of lost past damages due to intervening rights outweighs the risk of an invalidity finding. At first glance, neither (i) nor (ii) appears to be true in the case of Intuitive Surgical, Inc. v. Ethicon, LLC, (IPRs2018-00933, 00934, and 00935), yet Ethicon elected to pursue an MTA in each of the IPRs and was successful in doing so. More
November 20, 2019 – ArticleShort-Term Uncertainties after ArthrexThe Federal Circuit in a precedential opinion in Arthrex, Inc. v. Smith & Nephew, Inc., vacated and remanded a final written decision of the Patent Trial and Appeal Board (PTAB), finding that the Administrative Patent Judges (APJs) are not constitutionally appointed, violating the Appointments Clause. Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140 (Fed. Cir. Oct. 31, 2019). The opinion in Arthrex also indicates that an Appointments Clause challenge should be timely raised on appeal, and thus, is waived when not presented in an appeal that has passed or been decided. More
November 4, 2019 – ArticleObviousness Rejections Based On Inherent Properties Require Evidence
October 16, 2019 – ArticleSome Natural Phenomena are Better than Others: How which Natural Phenomenon a Claim is Directed to Influences Alice Step 2
October 11, 2019 – ArticleThe Flip Side of Reasonable Expectation of Success is UnpredictabilityThe Federal Circuit in a precedential opinion in Osai Pharmaceuticals, LLC v Apotex et al (Fed. Cir., October 4, 2019) http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1925.Opinion.10-4-2019.pdfreversed the USPTO's determination of obviousness in an IPR for patent claims directed to the treatment of non-small cell lung cancer (NSCLC). Just reading the background of the first three or four pages of the decision, it was already apparent that the Court was not going to be affirming the PTAB's decision. Notably: More
September 19, 2019 – ArticlePrior Art Introduced During Prosecution Has Important Implications for 101 ChallengesFive years after Alice Corp. Pty. v. CLS Bank Int'l, 573 U.S. 208 (2014) and the institution of the Alice test, district courts are still wading through precedent set by the Federal Circuit while it attempts to apply the test. Recently, one New Mexico District Court turned to prior art introduced during the prosecution process that was aimed at the questions of novelty and non-obviousness to determine whether there was an "inventive concept" for the Alice/Mayo test. More
September 9, 2019 – ArticleSpecification Must Adequately Disclose the Claimed Invention to Avoid Invalidation for Lack of Written DescriptionDrs. Stephen Quake and Christina Fan ("Quake") appealed a decision of the U.S. Patent and Trademark Office Patent Trial and Appeal Board ("the Board") finding the four claims of Quake's U.S. Patent 8,008,018 and Claim 25 of their U.S. Application No. 12/393,833 unpatentable for lack of written description. More
July 17, 2019 – ArticleUSPTO Publishes its Second PTAB Trial Practice Guide UpdateOn July 16, 2019, the Patent Office published its 2019 Trial Practice Guide Update, a copy of which can be found here. This follows on the heels of last August's Trial Practice Guide Update (here) which, perhaps most importantly, provided patent owners with a sur-reply to petitioner's reply brief as a matter of right. More
June 17, 2019 – ArticleCommercial Success of Claimed Product over Non-Infringing Competitive Products as Evidence of Non-ObviousnessDuring litigation or contested proceeding the patentee can point to commercial success of a product as evidence of non-obviousness of the claimed product. Although some work is necessary to show the nexus between the success in the market and the claimed invention, the evidence showing, for example, the product taking sales from competitive products could help the patentee's case. More
June 14, 2019 – ArticleSOVEREIGN IMMUNITY AND IPR'S: AND NOW, THE REST OF THE STORYRadio great Paul Harvey would always leave listeners hanging during his broadcast, then return from a commercial with "the rest of the story". Previously, I wrote on the Federal Circuit ruling with respect to Tribal Immunity (https://www.oblon.com/publications/tribal-immunity-in-ipr-is-dealt-a-death-blow-by-the-federal-circuit). At the end of that article I stated: "I note, however, that in the final sentence of their analysis, the Federal Circuit explicitly stated that this decision did NOT address whether there is any reason to treat state sovereign immunity differently with respect to IPR proceedings. That will remain to be seen…" More
May 28, 2019 – ArticleWritten Description In Provisional Application: Perdue Pharma L.P. v. Andrei Iancu.Amneal Pharmaceuticals, LLC. ("Amneal") filed two petitions for inter partes review of claims 1–13 and 16–19 of U.S. Patent No. 9,034,376 ("the '376 patent") of Purdue Pharma L.P., P.F. Laboratories, Inc. and Purdue Pharmaceuticals L.P. ("Purdue"). More
May 17, 2019 – ArticlePTAB Continues to Expand its Discretion to Deny IPR Review: Do Petitioners Really Have One Year From Service of a Complaint to get Their IPR on File?
May 9, 2019 – ArticlePTAB Issues Two New Precedential Opinions On Discretion to Deny Review - Implications for GenericsThe PTAB designated two decisions as precedential this week (in addition to several in previous weeks), both relevant to the Board's discretion to deny review. These cases illustrate that the PTO is in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. See my previous posts on other recent precedential decisions here and here. More
April 26, 2019 – ArticleFollow-On IPR Petitions - Institution Is Not Impossible But Difficult
April 17, 2019 – ArticlePTAB Issues Three New Precedential Opinions On RPIThe PTAB designated three decisions as precedential yesterday (in addition to several in previous weeks). These cases illustrate that the PTO is in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. More
April 8, 2019 – ArticlePTAB Designates Huawei Device v. Optis Cellular Tech. as Precedential
April 3, 2019 – ArticleNo Retroactive IPR Estoppel in Co-Pending Litigation
April 2, 2019 – ArticleDerivation Without Section 102(F) Changes Substance and Procedure!
March 27, 2019 – ArticleA Derivation Proceeding is not Just a Derivation Interference by Another Name!
March 20, 2019 – ArticlePTAB Issues Three New Precedential OpinionsThe PTAB designated three decisions as precedential this week (in addition to two earlier this month), indicating that the PTO may be in the process of designating precedential opinions on a number of issues, in line with revised Standard Operating Procedure 2 for designating precedential and informative decisions. More
March 19, 2019 – ArticleInvention by "Another": Duncan Parking Technologies, Inc. v. IPS Group, Inc., Appeal No. 2018-1205, -1360 (Fed. Cir. Jan. 31, 2019)IPS Group Inc. ("IPS") appealed from two decisions of the United States District Court for the Southern District of California granting summary judgment of non-infringement of U.S. Patents 8,595,054 and 7,854,310. Duncan Parking Technologies Inc. ("DPT") appealed from a related decision of the Patent Trial and Appeal Board ("the Board") in an inter partes review holding that claims 1–5 and 7–10 of the '310 patent were not shown to be unpatentable as anticipated under 35 U.S.C. § 102(e). More
March 14, 2019 – ArticlePTAB Precedential Opinion Panel Clarifies Issue Joinder Under 35 U.S.C. § 315(c)In the first case to be taken up by the PTAB's Precedential Opinion Panel (POP), Director Iancu, Commissioner Hirshfeld, and then Acting Chief Judge Boalick (now appointed) have determined that, under appropriate and limited circumstances, a petitioner may join its own previously-instituted IPR to request joinder and institution of new issues. More
March 11, 2019 – ArticleMotions to Amend: Is the PTAB's Lectrosonics Order Just of Western Digital?Spring gardening season has begun and the USPTO is once again planting its Motion to Amend ("MTA") seeds. In a substantial redux of Western Digital Corporation v. Spex Technologies, IPR2018-00082, -00084, paper 13, the PTAB this past week designated paper 15 of Lectrosonics v. Zaxcom, IPR2018-01129, 01130("Lectrosonics Order") as an informative decision. More
February 24, 2019 – ArticleNo More IPRs From Generic Drug Makers?The USPTO argues that a petitioner who has received a favorable final written decision in an IPR is estopped from reusing the same winning argument in a district court. More
February 11, 2019 – ArticleBioisosterism, by Itself, May Not be Sufficient Motivation to Modify a Lead CompoundIn the recent decision, Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc., the Federal Circuit affirmed the PTAB's finding that Claims 8 to 13 of U.S. Reissue Patent 38,551 ("the '551 patent") owned by Research Corporation Technologies, Inc. ("RCT") are not unpatentable. More
February 5, 2019 – ArticleRealtime Data, LLC, v. Iancu: No Requirement to Make Any Finding of a Motivation to Combine Two References When a Claim is Invalid as Being Obvious Over a Single ReferenceThe Federal Circuit affirmed the Patent and Trademark Appeal Board's (PTAB) determination that all of the challenged claims of Realtime's U.S. Patent 6,597,812 ("the ‘812 patent") would have been obvious over the prior art. More
February 1, 2019 – ArticlePTAB Rules That Section 101 Rejections Are Proper When Raised As Part Of An IPR Motion To AmendIt is quite common for IPR petitioners to raise § 112 defenses in opposition to a motion to amend filed by the patent owner. What's less common is for the petitioner to argue that the proposed amended claims fail to recite patentable subject matter under § 101. More
November 30, 2018 – ArticleHedge Your Bets in TC 1600 PGRs
November 16, 2018 – ArticleAssignor Estoppel And IPR's: Possible Impact of Arista v. Cisco On Employment Agreements and Assignment AgreementsIn a November 9, 2018 decision (copy of decision linked below), the U.S. Court of Appeals for the Federal Circuit ruled that the doctrine of assignor estoppel does not apply in the inter partes review (IPR) context (see Arista Networks, Inc. v. Cisco Systems, Inc., (Fed. Cir. 2018)). More
November 8, 2018 – ArticlePTAB Confirms It Will Apply Broad Petitioner Estoppel Post-SAS
October 10, 2018 – ArticleFinal Rule Change Replacing BRI with Phillips Standard
October 4, 2018 – ArticleTwo Herceptin Patents Survive IPR: A Lesson in Separately Arguing Motivation to Combine and Reasonable Expectation of Success
September 27, 2018 – ArticleTravatan Z Patent Survives IPR: A Lesson in Successfully Arguing Hindsight Bias
September 7, 2018 – ArticleJTEKT v. GKN: Federal Circuit Finds Competitor Lacks Standing to Appeal PTAB's Final Written Decision
August 28, 2018 – ArticleRecent Pharmaceutical House and Senate Bills
August 1, 2018 – ArticleDistribution of Certain Materials to Groups of People Without Restriction May Render Such Materials Printed Publications Under § 102(b)
July 26, 2018 – ArticleJazz v. Amneal: Public Accessibility of Prior Art v. Reasonable Pertinence of Analogous Art
July 26, 2018 – ArticleTribal Immunity in IPR is Dealt a Death Blow by The Federal Circuit
June 18, 2018 – ArticleDecs, Slides, and Video[tape]: Utilizing non-patent literature in IPR
June 18, 2018 – ArticleWho's Kidding Who?
June 11, 2018 – ArticleIs Real and Positive Change Coming for Patent Owners?
June 4, 2018 – ArticleEx Parte Jadran Bandic - Patent Eligibility Analysis After Berkheimer
June 4, 2018 – ArticleDoes the PTAB's Western Digital Order Move the Needle?
June 4, 2018 – ArticleThe POPR and Expert Declarations
May 17, 2018 – ArticleAnacor Pharmaceuticals, Inc. v. Iancu
May 7, 2018 – ArticleThe Decision Instituting the First Derivation ProceedingBNA’s Patent, Trademark & Copyright Journal
May 3, 2018 – ArticleUSPTO Webinar on Subject Matter Eligibility
May 2, 2018 – ArticleBiosimilars IPRs: Any Lessons From PTAB Institution Decisions On Coherus Petitions?
April 13, 2018 – ArticleUsing Expert Testimony in Prosecution