Photo of William K. Merkel, Ph.D.

William K. Merkel, Ph.D., has provided a range of intellectual property legal services to a diverse portfolio of clients for more than 20 years. With a current focus on patent prosecution in the biotechnological arts, he has prosecuted numerous domestic, foreign and international patent applications drawn to such diverse technologies as modulators of metabolic pathways involved in disease states, viral oncotherapies, agricultural technologies, and pharmaceutical products and methodologies. Read full bio here.

Student and Math Book

In Shinn Fu Co. of America, Inc. v. The Tire Hanger Corp., Dkt. No. 2016-2250 (Fed. Cir. July 3, 2017), Shinn Fu appealed the Board’s holding in IPR2015-00208 (discussed here), a rare case in which the PTAB granted a motion to amend, and determined that substitute claims 6-10 of USPN 6,681,897 were patentable.  The claims are drawn to methods of changing the wheels of vehicles on lifts without the operator having to bend while supporting the wheel.
Continue Reading PTAB Gets A Math Lesson

In IPR 2016-00036, a Bosch windshield wiper patent succumbed to Costco’s challenge on grounds of obviousness.   In its final written decision, the Board held claims 13, 17, and 18 of U.S. Patent No. 6,944,905 obvious.  IPR 2016-00039, discussed here, is another Board decision holding obvious several claims of U.S. Patent No. 7,228,588, another member of Bosch’s windshield wiper patent portfolio.  Unlike the Board’s finding in IPR 2016-00039 that PO failed to establish a nexus between proferred evidence and the claims sufficient to provide persuasive evidence of secondary considerations of non-obviousness, PO did establish that nexus in IPR 2016-00036.  Even with that nexus, however, a preponderance of the evidence led the Board to hold the challenged claims unpatentably obvious.
Continue Reading Secondary Considerations Again Fail to Shore Up Patent Estate

Drivers point of view: Looking through a car windscreen, as the windscreen wipers clear rain, and a car passes, approaching traffic lights at green. Selective focus, with focus on the windscreen raindrops.

In IPR 2016-00039, Costco challenged claims 1, 12 and 14 of USPN 7,228,588 owned by Bosch and drawn to beam (non-yoked) windshield wipers with spoilers to keep the wipers in contact with the windshield in high winds.  Petitioner combined one reference with each of two other references in support of obviousness challenges to the claims. In defense of the claims, Patent Owner relied on evidence in the challenged patent and on expert testimony.  The Board found PO’s evidence contradicted by other evidence of record and found PO’s expert testimony related to challenged patents not at issue in this IPR.  Further, the Board found that evidence of secondary considerations of non-obviousness was insufficiently developed and held the challenged claims unpatentably obvious.
Continue Reading Evidence of Secondary Considerations Fails to Establish Nexus to Challenged Claims

IPR 2015-01651 involved a dispute over the obviousness of claims in U.S. Patent No. 8,551,271 owned by Crown Packaging Technology, Inc. and drawn to a grooved crown bottle cap with thinner, harder steel than used in conventional caps.  World Bottling Cap, LLC, petitioned the Board to cancel the ’271 patent claims as being obvious based on two lines of attack.  The Board held the evidence of obviousness to be insufficient, with evidence of secondary considerations of non-obviousness contributing to the Board’s decision that no claims of the ’271 patent were unpatentable.
Continue Reading Secondary Considerations of Non-obviousness Retain Some Vigor

Bold man riding on a brown horses.

In IPR2015-01157, 10X Genomics, Inc. challenged claims 1-31 of USPN 8,889,083 owned by the University of Chicago.  PTAB instituted trial on grounds of obviousness over two references.  Each party relied on the testimony of one or more experts, and the Patent Owner challenged expert testimony as exceeding the proper scope of Petitioner’s Reply.

The technology at issue involved a device and method for pressurized transport of fluidic plugs, or droplets, in microfluidic systems used in chemical and biochemical reactions.  The plug form of transport arises by injecting fluid containing reagents and a fluorinated surfactant into an immiscible fluorinated carrier fluid flowing in non-fluorinated microchannels of a microfluidic system. 
Continue Reading Don’t Switch Horses Midstream

In IPR2015-01191, American MegaTrends and four other petitioners challenged claims 1-9, 11, 12 and 15 of USPN 6,892,304 owned by Kinglite Holdings, Inc. on grounds of obviousness over three technical documents, supplemented by a fourth document for the challenge to claim 6.  The parties also indicated that they were involved in 11 other IPR petitions and two district court proceedings.

The technology disclosed and claimed in the ‘304 patent involved methods of encrypting instructions to the Basic Input-Output System (BIOS) of a computer operating system using a private-public key pair.
Continue Reading It Isn’t Printed Publication Art Unless It’s Publicly Accessible

Woman Upset Hitting Forehead with her HandIn IPR 2015-01127, PAR Pharmaceuticals, challenged claims 1-11 of USPN 8,404,215 owned by Horizon Therapeutics, LLC on grounds of obviousness over various combinations of six references.  Lupin Ltd. and Lupin Pharmaceuticals, Inc. filed another challenge to the claims of the ‘215 patent on the same grounds using the same arguments and evidence as used by PAR.  The Board joined the two proceedings and construed the claims-at-issue in accordance with the plain meaning of the recited terms, crediting the unrebutted testimony of Petitioners’ expert in holding the claims unpatentably obvious under 35 U.S.C. § 103(a) over various combinations of the cited art.
Continue Reading Ignore Occam’s Razor at your Peril

In what has been a rare outcome to date, the Federal Circuit in Apotex v. Wyeth, dkt. no. 2015-1871 (Fed. Cir. Aug. 16, 2016) affirmed in a non-precedential decision the PTAB’s final written decision in IPR2014-00115 that the challenged claims were not unpatentably obvious over three references.  At trial, the PTAB found that Apotex did not sustain its burden of showing by a preponderance of the evidence that there was a reason to substitute the claim-recited antibiotic for a prior art antibiotic and that there was a reason to combine the three references.  In its appeal, Apotex unsuccessfully argued that the structural similarity of the antibiotics provided a reason to substitute, and argued that the PTAB failed to consider reasons to combine other than solving the problem addressed by the Patent Owner.
Continue Reading Federal Circuit Affirms PTAB Upholding Patent Claims

A breaking chain link can symbolise failure or success. It?s a strong image expressing the famous weakest chain link, breaking free from a bad habit or finally succeeding / failing in a project.

IPR2015-00291 decided a petition filed by Daiichi Sankyo Co. Ltd. against USPN 8,168,181 owned by Alethia Biotherapeutics, Inc.  The ‘181 patent issued from a continuation-in-part of the U.S. national phase of a PCT application and contains claims drawn to methods of impairing osteoclast differentiation, useful in treating various bone diseases.  The Board denied the Patent Owner’s priority claim and found an attempt to antedate intervening art inadequate, leading to a holding that the ‘181 claims were unpatentable under 35 U.S.C. § 102(a).  The decision illustrates the potential of intervening art not considered during prosecution and also illustrates the shifting legal view of the patentability of antibody-based technologies.
Continue Reading Priority Claims Unchallenged In Prosecution Can Be Weak Links

BoxerIn IPR2015-01537, Momenta petitioned for IPR of claims 1-15 of U.S. Patent No. 8,476,239 owned by Bristol-Myers Squibb (BMS) on grounds of obviousness over three references: Cohen, Shire, and Carpenter.  Petitioner also relied on expert testimony.  The claims recite formulations containing CTLA4Ig, which is a stabilized form of a negative regulator (checkpoint inhibitor) of the immune system useful in treating autoimmune disease and rheumatoid arthritis, for example.  The Patent Owner opposed institution by attacking the Petitioner’s position as failing to provide a reason to combine the cited references and as relying on impermissible hindsight in arriving at a formulation that satisfied all features recited in the claims (i.e., tonicity, pH, excipient concentration, excipient:therapeutic mass ratio, volume, and stability). 
Continue Reading Supporting Evidence, Not Counter-Punching, May Be Needed In An IPR