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
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
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
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
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
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
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