Sections 102/103

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PTAB Properly Applied the Printed Matter Doctrine

By Noah K. Tilton on Posted in Appeals, Claim Construction, Inter Partes Review, Section 101, Sections 102/103
In Praxair Distrib. v. Mallinckrodt Hosp. Pdts., (Fed. Circ. May 16, 2018), the Federal Circuit affirmed the PTAB’s application of the printed matter doctrine in an IPR, and determined that all challenged claims were obvious. Mallinckrodt’s patent is directed to methods of treating newborns having low blood oxygenation with nitric oxide (NO) gas, “to dilate … Continue Reading

PTAB Was Wrong to Ignore an Applicant’s Prosecution Disclaimer Because of Examiner’s Reasons for Allowance

By Marshall Gerstein on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
Despite disagreeing with the PTAB’s preferred claim construction, the Federal Circuit in Arendi S.A.R.L. v. Google LLC, Case No. 2016-1249 (Fed. Cir. Feb. 20, 2018) nevertheless determined that the PTAB had correctly canceled the challenged claims. The Board had offered two, alternative rulings invalidating all claims on obviousness grounds. In its primary ruling, the Board … Continue Reading

Federal Circuit Reverses, i.e. Overturns, Board’s Anticipation Decision Due to Overbroad Claim Construction

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In TF3 Ltd. v. Tre Milano, LLC, Appeal 2016-2285 (Fed. Cir. July 13, 2018), the Federal Circuit reversed the Patent Trial and Appeal Board’s final written decision canceling claims directed to a hair styling device as anticipated by prior art.  The court concluded that the Board improperly broadened two claim terms beyond the description in … Continue Reading

Mixed Result Upheld in Personal Audio IPRs

By Marshall Gerstein on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
The Federal Circuit upheld the PTAB’s mixed decisions in IPRs filed by Google to challenge claims of two Personal Audio LLC patents asserted against Apple, Samsung, Amazon and Research in Motion, in addition to Google. Google LLC v. Personal Audio LLC, Nos. 2017-1162, -1166, -2110, -2111 (Fed. Cir. Aug. 1, 2018) (non-precedential).… Continue Reading

PTAB May Cite New References Not Cited in the IPR Petition

By Marshall Gerstein on Posted in Inter Partes Review, IPR, Sections 102/103
In affirming a PTAB IPR decision canceling claims for obviousness, the Federal Circuit concluded that the PTAB’s reliance on references not included in the original petition did not violate due process or the patent owner’s procedural rights under the Administrative Procedure Act (APA).  Anacor Pharm., Inc. v. Iancu, 889 F.3d 1372 (Fed. Cir. 2018). Citing … Continue Reading

PTAB Failed to Properly Apply Incorporation by Reference Doctrine

By Ryan J. Schermerhorn on Posted in Appeals, Inter Partes Review, Section 112, Sections 102/103
In Paice LLC, The Abell Foundation, Inc., v. Ford Motor Company, Appeal No. 2017-1406 (Fed. Cir. Feb. 1, 2018), the Federal Circuit reversed a PTAB decision for failing to properly apply the doctrine of incorporation by reference, thereby reminding the PTAB as well as practitioners alike of the proper standard for invoking and applying that … Continue Reading

Inventor’s Uncorroborated Testimony Not Sufficient to Swear Behind Reference

By Michael R. Weiner on Posted in Inter Partes Review, IPR, Sections 102/103
Attempting to “swear behind” an alleged prior art reference has been common practice in IPRs, going back to the first IPR, Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001 (PTAB 2013), aff’d sub nom. In re Cuozzo Speed Tech., LLC, 793 F.3d 1268 (Fed. Cir. 2015), aff’d sub nom., Cuozzo Speed Tech., LLC v. … Continue Reading

Claim Term Read Out by PTAB Constituted “Harmless Error”

By Noah K. Tilton on Posted in Appeals, Claim Construction, Inter Partes Review, Sections 102/103
In a recent non-precedential decision, Snap-on Inc. v. Milwaukee Elec. Tool Corp., No. 2017-1305, 2018 WL 935454 (Fed. Cir. Feb. 16, 2018), the Federal Circuit affirmed the PTAB’s final written decisions in several IPRs that upheld challenged claims of Milwaukee Tool patents as nonobvious, although the court determined that the PTAB erred in construing a … Continue Reading

Play the Claim

thumbnail image of DNA strandBy Sandip H. Patel on Posted in Biotechnology, Claim Construction, Ex Parte, Reexamination, Sections 102/103
Monsanto Technology LLC v. E.I. DuPont de Nemours & Co. Appeal 2017-1032 (Fed. Cir. Jan. 5, 2018), illustrates “[t]he life of a patent solicitor has always been a hard one.” [1] The case concerns an inter partes reexamination of a Monsanto patent in which the Patent Office concluded the claimed subject matter was inherently described in an … Continue Reading

Rituxan Patent Spared by Failure to Establish Product Label as “Printed Publication”

thumbnail image of DNA strandBy Heather R. Kissling on Posted in Biotechnology, Inter Partes Review, Sections 102/103
A patent relating to a method of treating rheumatoid arthritis using rituximab recently survived its fourth IPR challenge. Celltrion, Inc. v. Biogen, Inc., IPR2016-01614 (PTAB Feb. 21, 2018). The PTAB determined that the Petitioners failed to establish that the challenged claims of the patent were obvious over prior art, in part, because of the Petitioners’ … Continue Reading

Petitioner Failed to Show That Patent Owner’s Drug Product Package Insert Was a Printed Publication

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Inter Partes Review, Sections 102/103
On February 9, 2018, the PTAB denied Sandoz Inc.’s petition for inter partes review of U.S. Patent No. 9,512,216, a patent owned by AbbVie Biotechnology Ltd. The patent recites methods for treating moderate-to-severe chronic plaque psoriasis with adalimumab, a human anti-tumor necrosis factor α (TNFα) antibody.  The methods of the claimed invention involve subcutaneously administering … Continue Reading

Precedential and Informative Board Decision on Serial IPR Petitions

By Lynn L. Janulis, Ph.D. on Posted in Institution / Denial, Inter Partes Review, IPR, Real Party-in-Interest, Sections 102/103
Serial IPR petitions directed to previously-challenged patents account for many of the petitions filed with the PTAB; however, 35 U.S.C. § 325(d) provides the Board with discretion to reject petitions where the same, or substantially the same, prior art or arguments have already been presented to the USPTO.  The Board recently designated as precedential part … Continue Reading

A Split Federal Circuit Panel “at Once Envisaged” Different Conclusions of Anticipation

By Marshall Gerstein on Posted in Appeals, Sections 102/103
Can the disclosure in a prior art reference be too extensive for the art not to anticipate? According to a recent decision, the Federal Circuit apparently thinks so. In Microsoft Corp. v. Biscotti Inc., Case Nos. 2016-2080, -2082, -2083 (Fed. Cir. Dec. 28, 2017), a split Federal Circuit panel affirmed a Board’s decision—also a split … Continue Reading

Avoid Creating Bad Blood with the Board

By Kate Nuehring Su on Posted in Institution / Denial, Section 101, Sections 102/103
The Board recently denied a post grant review petition because the challenge was deemed redundant of the Patent Office’s earlier examination of similar claims in a related application. Live Nation Entertainment, Inc. v. Complete Entertainment Resources  B.V., Case No. PGR2017-00038 (PTAB January 16, 2018). The decision offers a cautionary tale for patent practitioners.  The Board … Continue Reading

Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable

By Ryan J. Schermerhorn on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
Last fall, the Federal Circuit reversed a PTAB decision that affirmed an Examiner’s rejection of various claims in an ex parte reexamination because the Examiner’s interpretation of the claims, which the PTAB upheld, was unreasonably broad. In re Smith International, Inc., Appeal No. 2016-2303 (Fed. Cir. Sept. 26, 2017). The court’s decision is noteworthy because … Continue Reading

PTAB Should Have Considered Argument Raised in “Redundant,” Non-instituted Ground

By Michael R. Weiner on Posted in Institution / Denial, Inter Partes Review, IPR, Sections 102/103
In CRFD Research Ltd. v. Matal, No. 2016-2198 (Fed. Cir. Dec. 5, 2017), the Federal Circuit determined that the PTAB erred in its obviousness analysis, in part by failing to consider an argument the IPR petitioner made in a ground that the PTAB determined was “redundant” to the instituted grounds. Petitioner Hulu, LLC, challenged claims … Continue Reading

PTAB Not Always Bound By Previous Court Decisions Regarding Patent Validity

thumbnail image of DNA strandBy Katherine L. Neville, Ph.D. on Posted in Appeals, Biotechnology, Sections 102/103
In Novartis AG v. Noven Pharm. Inc., Appeal 2016-1678-1679 (April 2017), Novartis appealed two PTAB decisions holding claims of two patents obvious over cited prior art (IPR2014-00549 and IPR2014-00550), arguing that previous judicial holdings of non-obviousness should control the PTAB’s factual findings and that the claims should have been held non-obvious. The two Novartis patents … Continue Reading

Eli Lilly’s Pemetrexed Therapy Claims Survive Challenge At PTAB

thumbnail image of DNA strandBy Heather R. Kissling on Posted in Biotechnology, Inter Partes Review, IPR, Sections 102/103
The Federal Circuit’s decision in Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., 845 F.3d 1357 (Fed. Cir. 2017) attracted much attention for applying the theory of divided infringement in the context of pharmaceutical therapeutic regimen claims.  Before the Federal Circuit decision, a scrum of petitioners successfully petitioned for IPR of the Lilly patent, … Continue Reading

Error in Claim Construction Leads to Reversal of IPR Decision and Cancelation of Claims

By Michael R. Weiner on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
Two recent Federal Circuit decisions illustrate how an error in construing claims may lead the court to reverse a PTAB final written decision. In Organik Kimya AS v. Rohm & Haas Co., the Federal Circuit determined that the PTAB correctly construed the disputed claim term, “swelling agent,” and therefore affirmed the PTAB’s decisions upholding the … Continue Reading

Federal Circuit Overturns PTAB’s Finding of Patent Validity

By Matthew R. Carey on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
In a split opinion in Homeland Housewares, LLC v. Whirlpool Corporation, the Federal Circuit has again overturned a final written decision issued by the PTAB determining that challenged claims in an IPR were not unpatentable, a development that should at least cast doubt on the validity of patents that survive challenges at the PTAB. Homeland … Continue Reading
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