USPTO Publishes its Second PTAB Trial Practice Guide Update
On 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.
Commercial Success of Claimed Product over Non-Infringing Competitive Products as Evidence of Non-Obviousness
During 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.
SOVEREIGN IMMUNITY AND IPR'S: AND NOW, THE REST OF THE STORY
Radio 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…"
Written 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").
PTAB Issues Two New Precedential Opinions On Discretion to Deny Review - Implications for Generics
The 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.
PTAB Issues Three New Precedential Opinions On RPI
The 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.