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Joshua T. Elliott

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With over 15 years of experience, Josh Elliott focuses on patent law matters related to biochemistry and biotechnology, including advising and counseling clients on issues such as freedom-to-operate, infringement, validity, and design around strategies. His practice includes rendering opinions, conducting patent due diligence investigations, advising clients on patent portfolio strategies, strategically managing global patent portfolios, and preparing and prosecuting patent applications. Mr. Elliott also has experience advising clients on due diligence issues related to potential investments, venture funding, and initial public offerings. Read full bio here.

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The PTAB’s final written decision in Inguran, LLC d/b/a Sexing Techs. v. Premium Genetics (UK) LTD., Case PGR2015-00017, Paper 22 (PTAB 2016), illustrates what a Patent Owner must do to demonstrate that a challenged claim is entitled to an earlier effective filing date in an AIA trial.

The PGR involved U.S. Patent 8,933,395, which issued from an application filed on January 31, 2014, that was a continuation of pre-AIA patent applications filed before March 15, 2013, with the same text as those prior applications. As we explained in our prior post, the PTAB instituted PGR of claims 1-14, despite the patent’s claimed pre-AIA effective filing date. The PTAB found, at that institution phase, that claim 2 of the patent was only entitled to a post-AIA effective filing date and, thus, the entire patent and all of its challenged claims were eligible for PGR.  The PTAB instituted review on multiple grounds, including anticipation by each of Mueth, Frontin-Rollet, and Durack.
Continue Reading To Establish Entitlement to an Earlier Effective Filing Date, Every Claim Limitation Must be Addressed

In two final written decisions (IPR2015-01093 and IPR2015-00990), the PTAB found that challenged claims in Shire’s U.S. Patent No. 7,056,886 (the ’886 patent) were invalid as obvious.  The decisions highlight potential issues related to patents directed to pharmaceutical formulations that petitioners and patent owners alike may want to consider if confronted with an IPR related to such subject matter.

The Coalition for Affordable Drugs filed two petitions for IPR, one challenging claims 1−45 of U.S. Patent No. 7,056,886 (IPR2015-01093) and one challenging claims 46−52 and 61−75 of the ’886 patent (IPR2015-00990). 
Continue Reading PTAB Cancels Gattax® Patent Claims in Coalition for Affordable Drugs IPRs

The PTAB’s final written decision in Butamax Advanced Biofuels LLC v. Gevo, Inc. Case IPR2013-00539, Paper 33 (P.T.A.B. 2015), illustrates the importance of providing more than attorney argument to show that claims have written description support in a provisional application. 
Continue Reading Establishing Written Description Support May Require Supporting Evidence, More Than Attorney Argument

Resources & Info

Arthrex and the Supreme Court Resource Center

In United States v. Arthrex, Inc., the Supreme Court has heard whether 125+ PTAB decisions rendered through October 2019 must be remanded for new decisions. Read about how that issue developed through our post.

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Our Team

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.