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.

In IPR2015-00208, Shinn Fu petitioned for IPR of USPN 6,681,897 owned by Tire Hanger.  All five claims of the patent were drawn to methods of supporting vehicle wheels removed from a vehicle while on a service lift, wherein the supports would allow technicians to remove and replace the wheels without risking back injury by bending.  By all accounts, Shinn Fu mounted a strong attack against all claims in the ‘897 patent, and the PTAB instituted review.  Foregoing a dogged defense of the granted claims, Tire Hanger maintained a clear head and responded to the petition by filing a contingent motion to amend the claims rather than a Patent Owner Response. 
Continue Reading PTAB Grants Motion to Amend Claims

Warning SignIn Harmonic Inc. v. Avid Technology, Inc., the Federal Circuit concluded that the PTAB’s practice of denying IPR institution on redundant grounds is appropriate.  The Court’s decision is important because it should counsel prospective petitioners to carefully select grounds on which to petition review and offer an explanation in the petition as to why multiple grounds are not redundant.
Continue Reading Avoid Stumbling Before You Get To The Merits Of A PTAB Appeal

DetailsBoehringer 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 to a method of treating low-grade non-Hodgkins lymphoma (LG-NHL) with CVP tri-chemical chemotherapy and rituximab maintenance therapy. 
Continue Reading Put Away The Blunderbuss – Attention to Detail and Thoroughness Are Needed in Preparing an IPR Petition

Casino DealerBoehringer 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 methods of administering rituximab to RA patients not responding to TNF-α inhibitors, a subset of RA patients.  The PTAB instituted an IPR of two of the 19 obviousness grounds contained in the petition.  Given the number, and nature, of grounds to be reviewed, and the outcome, it is apparent that the more grounds found in a petition, the greater the chance that the best arguments will be lost in the shuffle.
Continue Reading Gamble At Your Own Risk – The Danger Of Petition Overkill

Black and white older golfer with a big belly with surrounded by a circle with a ribbon below.

Filed concurrently with the petitions at issue in IPR2015-00417 and IPR2015-00418, Boehringer Ingelheim filed the petition at issue in IPR2015-00415 seeking review of U.S. Patent No. 7,820,161 owned by Genentech and Biogen Idec.  The Board’s institution decision steadily whittled down Boehringer’s varied attacks on the patent.  Ultimately, IPR was granted on 2 of the 36 obviousness grounds in the petition (additional grounds were summarily denied for failure to identify the ground with particularity), with the two surviving grounds implicating half of the 12 claims of the ‘161 patent. 
Continue Reading Grinning Patentees Get A Mulligan