Tag Archives: Anticipation

CFAD Fails to Knock Out 4 Acorda Patents to Multiple Sclerosis Drug

A recent set of final written decisions in four IPRs against Acorda Therapeutics puts more marks in the loss column for Kyle Bass and the Coalition for Affordable Drugs.  In IPRs 2015-01850, -01853, -01857 and -01858 (Coalition for Affordable Drugs v. Acorda Therepuatics Inc.), the Coalition for Affordable Drugs (CFAD) requested review of Acorda Therapeutics … Continue Reading

Federal Circuit to PTAB: Prior Art Cannot Anticipate Absent Disclosure of All Claimed Features

In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), the Federal Circuit issued a precedential opinion explaining that a prior art reference cannot anticipate a patent claim if the reference does not disclose all claimed features. That straightforward explanation of black letter law was prompted by a PTAB … Continue Reading

Claims Construed and Canceled as Patent Nears its Expiration Date

In MPHJ Technology Investments, LLC v. Ricoh Americas Corp., Appeal 2016-1243 (Fed. Cir. Feb. 13, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling all eight claims in U.S. Patent No. 8,488,173. The patent issued from an application that was the tenth continuation-in-part of a 20-year-old application that relies for priority on seven … Continue Reading

Federal Circuit Upholds Cancellation of Micrografx Patent Claims for Anticipation

In recent non-precedential decisions, Micrografx, LLC v. Google Inc., Case No. 2015-2090 (Fed. Cir. Nov. 29, 2016) (Micrografx I) and Micrografx, LLC v. Google Inc. (Micrografx II), Case No. 2015-2091 (Fed. Cir. Nov. 29, 2016), the Federal Circuit upheld three IPR final written decisions canceling challenged claims of Micrografx patents for anticipation, and denying a … Continue Reading

Federal Circuit Vacates Board’s Decision Cancelling Method Claims for Purchasing Goods and Services Based on Unreasonable Claim Interpretation

The Federal Circuit recently vacated PTAB final written decisions that rested on a claim construction contradicted by the patent’s prosecution history. Specifically, in D’Agostino v. Mastercard Int’l Inc., No. 2016-1592, 2016-1593 (Fed. Cir. December 22, 2016), the court vacated the Board’s IPR decisions of unpatentability of method claims in two patents directed to processes for … Continue Reading

Federal Circuit Reverses PTAB’s Anticipation Decision: Proof of Prior Conception Improperly Excluded as Hearsay

The Federal Circuit reversed, in part, a PTAB final written decision after determining that several emails, wrongly excluded as hearsay, showed the inventor’s conception prior to allegedly anticipating art.  In REG Synthetic Fuels, LLC v. Neste Oil Oyj,  No. 2015-1773 (Fed. Cir. Nov. 18, 2016), the Federal Circuit reversed the PTAB’s finding that a prior … Continue Reading

PTAB Failed to Properly Apply Incorporation by Reference Standard for Anticipation

This blog previously referenced Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290 as an example of the Board granting a request for rehearing, but ultimately confirming its original decision.  On appeal, the Federal Circuit vacated the Board’s decision on the particular issues raised by the Petitioner in the request for rehearing, suggesting that … Continue Reading

Federal Circuit Suggest Expansive Interpretation of “Adapted to” in Affirming CBM Cancellation

In a recent non-precedential decision, the Federal Circuit suggested a very expansive interpretation for the oft-used phrase “adapted to.” Relying upon the prosecution history, the Federal Circuit determined that the Board correctly construed claims relating to interactive video programming, and on that basis affirmed the Board’s decision that the claims were anticipated by a prior … Continue Reading

“Providing . . . information” Step Given No Patentable Weight

The PTAB recently addressed the limits on strategies to patent drug labeling, canceling claims directed to a method of supplying a pharmaceutical product where the method includes a step of providing certain “information” to the medical provider. According to the PTAB, the claimed step of providing the information is entitled to no patentable weight under … Continue Reading

PTAB Finds Motivation to Combine References, but Cancellation Comes Too Late for More than 200 Defendants

On July 6, 2016, the PTAB cancelled claims in a patent which had bedeviled more than 250 named defendants in litigation dating back to 2008.  The list of defendants reads like a Who’s Who of financial and commercial businesses, including the nation’s most prominent banks, credit card companies, online stock traders, e-Commerce retailers, cable and … Continue Reading

It’s Complicated: PTAB Reinforces Notion That Petitioners Should Consider Expert Testimony in Complex Technology Areas

This Blog previously highlighted the risks involved when a petitioner does not submit an expert declaration with their petition.  This risk may be lessened where the “the invention and prior art references are directed to relatively straightforward and easily understandable technology.” [Paper No. 41 at 17 n.6 of IPR2014-00169] (ruling in favor of petitioner despite … Continue Reading

PTAB Cannot Cancel Claim Based on New Argument Raised at Final Hearing

In Dell, Inc. v. Acceleron, LLC, Case No. 2015-1513, -1514 (Fed. Cir. 2016), the Federal Circuit vacated in part the PTAB’s final written decision in IPR2013-00440, on the basis that the PTAB improperly canceled a claim based on a factual assertion first raised by the petitioner at final hearing, too late for the patent owner … Continue Reading

One Post-AIA Claim Risks PGR For All Claims

In its seventh PGR institution, the PTAB recently decided for the first time that a patent asserting a pre-AIA effective filing date was eligible for post-grant review because it contained at least one claim that was only entitled to a post-AIA effective filing date.  Although some claims were entitled to a pre-AIA effective filing date, … Continue Reading

APJs Dispute Requirements for a Reference to Qualify as a Printed Publication

Final written decisions, IPR2014-00781, IPR2014-01086, IPR2014-00821, IPR2004-00580, IPR2014-00802, for IPRs of several patents owned by Zond, LLC, which include rare dissenting opinions, illustrate different views of APJs concerning the requirements for establishing that a reference is a printed publication under 35 U.S.C. § 102(b). These decisions provide helpful guidance on how to address references whose … Continue Reading

Petitioner Must Prove Reference Art Entitled to Filing Date of its Provisional Application.

When an alleged prior-art patent in an IPR claims priority to a provisional application, and the challenged patent claims priority to an intervening date between the provisional filing date and the non-provisional filing date of the reference patent, the burden is on the Petitioner to prove that the prior-art patent is entitled to the filing date … Continue Reading

Put Away The Blunderbuss – Attention to Detail and Thoroughness Are Needed in Preparing an IPR Petition

Boehringer Ingelheim filed three petitions attacking patents generally drawn to methods of treating RA patients with rituximab.  The decisions on two of those petitions, i.e., IPR2015-00415 and IPR2015-00417, have been addressed elsewhere.  In IPR2015-00418, the PTAB declined to institute an IPR on the petition’s challenges to the lone claim of U.S. Patent No. 8,329,172, drawn … Continue Reading

Gamble At Your Own Risk – The Danger Of Petition Overkill

Boehringer Ingelheim filed the petition at issue in IPR2015-00417 concurrently with the petitions at issue in IPR2015-00415 and IPR2015-00418 to challenge patents protecting methodologies for treating rheumatoid arthritis (RA) with rituximab, an FDA-approved antibody for treating certain cancers.  The IPR2015-00417 petition specifically challenged the fourteen claims of U.S. Patent No. 7,976,838, which are drawn to … Continue Reading
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