Analysis of patent litigation, PTAB practice, prosecution and pharma IP, written on the data behind LexDana.
Tagged inter partes review · clear
Federal Circuit Summary Before Newman, Dyk , and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary : The PTAB may enter an adverse judgment against a patent owner where, before issuing an institution decision on an IPR petition, the…
On December 19, 2017, a seven-judge expanded PTAB panel ruled that the University of Minnesota (UM) waived its Eleventh Amendment immunity defense when it filed a patent infringement action in federal district court. Eleventh Amendment immunity had been…
Federal Circuit Summary Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Anticipation is not proven by multiple, distinct teachings in a single prior art document that a skilled artisan might somehow combine…
Federal Circuit Summary Before NEWMAN, CHEN , and HUGHES. Appeal from the Patent Trial and Appeal Board. Summary: In inter partes review, the patent challenger bears the burden of proving that proposed amended claims are unpatentable. This burden applies…
On November 16, 2017, the USPTO issued new procedures ( “ Standard Operating Procedure 9” ) for governing cases remanded from the Federal Circuit. These procedures are applicable to all decisions remanded from the Federal Circuit to the PTAB,…
The USPTO announced that the official fees for IPR and PGR will increase significantly starting on January 16, 2018. See 82 Fed. Reg. 52780, 52807 (Nov. 14, 2017). The IPR petition request fee will increase $6,500 (from $9,000 to $15,500) and the…
The Saint Regis Mohawk Tribe’s recent motion to terminate pending IPRs on patents purported to cover Allergan’s Restasis® product has spurred two parties to seek authorization from the PTAB to file amicus briefs. Earlier this year, Allergan…
On October 17, 2017, the PTAB issued a final written decision in an IPR holding all claims unpatentable after the Federal Circuit vacated and remanded the PTAB’s previous final written decision. The PTAB reversed their original patentability…
EXECUTIVE SUMMARY: When the America Invents Act was passed in 2011, most of us saw the inter partes review process as a streamlined, relatively inexpensive procedure that would permit accused infringers, especially those accused by non-practicing entities,…
On October 24, 2017, the PTAB designated as “informative” the following three decisions that discretionarily denied institution of IPR petitions under 35 U.S.C. § 325(d). Section 325(d) provides that “the Director may take into…
In an effort to lay the groundwork for generic entry and reduced drug prices, the non-profit group Initiative for Medicines, Access and Knowledge, Inc. (I-MAK), with the support of the Laura and John Arnold foundation, has petitioned the PTAB seeking Inter…
Written by Rebecca L. Wright, Ph.D. and Nathanael Luman, Ph.D. The Federal Circuit issued an en banc decision instructing the PTAB to assess patentability of amended claims in IPR proceedings without placing the burden of persuasion on the patent owner.…
