Secondary Considerations Error Does Not Warrant Reversal

By John R. Labbé on December 30, 2015 Posted in Appeals, Inter Partes Review

As we’ve previously reported, patent owners have had little success arguing secondary considerations of non-obviousness during inter partes review. Underscoring the challenge that patent owners face, the Federal Circuit recently affirmed a PTAB obviousness determination despite finding that it had erred in its consideration of the patent owner’s evidence regarding objective indicia of non-obviousness.… Continue Reading

Denial of IPR Institution Doesn’t Make Invalidity Case Unreasonable

By John R. Labbé on October 28, 2015 Posted in Institution / Denial

Short of invalidating a patent, can the outcome of IPR dictate the outcome of a district court case? The interplay between PTAB and district courts remains uncertain. As we’ve previously reported here and here, sometimes district courts give weight to PTAB decisions, and sometimes they don’t.… Continue Reading

Pharma industry continues efforts to exempt patents from IPR

By John R. Labbé on October 1, 2015 Posted in Biotechnology, Inter Partes Review, Legislation

The pharmaceutical industry continues its efforts to exempt pharmaceutical and biotechnology patents from inter partes review (IPR). Neither the House’s Innovation Act nor the Senate’s PATENT Act currently contain any provisions that would exempt particular patents from these proceedings. But as we reported in June, some members of the Senate judiciary committee appear sympathetic to … Continue Reading

PTAB Judges Give Discovery Insights and Allude to Rule Changes

By John R. Labbé on July 16, 2015 Posted in Discovery

In a Boardside Chat on July 14, two PTAB judges provided insights regarding discovery best practices and strategies in AIA proceedings and alluded to upcoming rule changes that may change the standard for seeking discovery. The panel featured Lead Judge Grace Obermann and Judge Justin Arbes.… Continue Reading

PTAB Denies Institution in Cepheid v. Roche: PCR Primers Found Not Inherently Anticipated

By John R. Labbé on June 19, 2015 Posted in Biotechnology, Claim Construction, Institution / Denial

On June 11, 2015, the PTAB denied institution of Cepheid’s petition seeking inter partes review of Patent No. 5,643,723 directed to methods of detecting tuberculosis in humans (IPR2015-00255). To defeat institution, the patent owner successfully used its preliminary response to persuade the Board to (a) narrowly construe claim terms (despite the broadest-reasonable-construction standard), and (b) … Continue Reading

Hatch-Waxman and BPCIA Patents May Be Exempted from Post-Grant Proceedings Under Pending Senate Legislation

By John R. Labbé on June 8, 2015 Posted in Biotechnology, Legislation

On Thursday, June 4, the Senate Judiciary Committee approved the Protecting American Talent and Entrepreneurship (PATENT) Act. We previously reported the significant provisions of the bill. Several members of the Judiciary Committee expressed support for a further proposal that would exempt from PTO post-grant proceedings patents that are subject to the Hatch-Waxman or Biologics Price … Continue Reading