Sections 102/103

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Petitioner Made Rebuttal Argument in Reply, Not an Improper New Argument

By Michael R. Weiner on Posted in Inter Partes Review, IPR, Sections 102/103, Trial Procedures
PTAB rules prohibit raising new arguments in a reply brief, but it can be difficult to distinguish between an improper reply argument and a proper rebuttal. In Idemitsu Kosan Co. v. SFC Co., No. 2016-2721 (Fed. Cir. Sept. 15, 2017), the Federal Circuit determined that the IPR petitioner properly made a rebuttal argument—not a belated, … Continue Reading

Rejection of Claims Containing Functional Language and a Negative Limitation Affirmed by Federal Circuit

By Kate Nuehring Su on Posted in Appeals, Sections 102/103
The Federal Circuit’s recent decision in In re Chudik, Appeal 2016-2673 (Fed. Cir. August 25, 2017) (non-prec.), offers patent practitioners a cautionary tale and good teaching points about the propriety of negative limitations and functional claim language.  No two situations are the same, of course, but the case offers a real-world example of how claims … Continue Reading

Secondary Considerations Again Fail to Shore Up Patent Estate

By William K. Merkel, Ph.D. on Posted in Inter Partes Review, IPR, Sections 102/103
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 … Continue Reading

Eli Lilly Successfully Challenges U Penn Erbitux® Claims at PTAB, Derailing Infringement Suit

thumbnail image of DNA strandBy Heather R. Kissling on Posted in Biotechnology, Inter Partes Review, IPR, Sections 102/103
The PTAB recently canceled the University of Pennsylvania’s U.S. Patent No. 7,625,558, a potentially fatal blow to the University’s suit against Eli Lilly and Company alleging its cancer therapeutic Erbitux® (centuximab) infringes the patent.  Eli Lilly and Co. v. Trustees of the Univ. of Penn., Case IPR2016-00458 (July 13, 2017). The PTAB’s decision resolved testimony … Continue Reading

Statement of Agreement or Disagreement with Attorney Argument Alone Does Not Provide Substantial Evidence To Support PTAB Findings

By Kate Nuehring Su on Posted in Inter Partes Review, IPR, Sections 102/103
In Google Inc. v. Intellectual Ventures II LLC, Appeal 2016-1543, 2016-1545 (Fed. Cir. July 10, 2017), the Federal Circuit affirmed the PTAB’s final written decision canceling some claims of U.S. Patent No. 6,121,960, but vacated the portion of the decision that refused to cancel other claims.  With respect to the upheld claims, the court remanded … Continue Reading

Pay-Per-Click Patent Found Ineligible Under Section 101

By Marshall Gerstein on Posted in Section 101, Sections 102/103
In a final written decision issued on April 24, 2017, the PTAB canceled all four challenged claims of U.S. Patent No. 8,671,057, directed to detecting invalid and fraudulent clicks in pay-per-click web advertising (Google Inc. v. Zuili, CBM2016-00008 (Paper 56)). The PTAB found all four claims unpatentable under 35 U.S.C § 101, and obvious under … Continue Reading

Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPR

By Eric M. Brusca, Ph.D. on Posted in Inter Partes Review, Sections 102/103
On June 7, 2017, the PTAB issued a final written decision in IPR 2016-00254 canceling claims in a Fresenius Kabi USA, LLC (Fresenius) patent covering Diprivan®. The PTAB instituted the IPR in response to a petition filed by hedge fund manager Kyle Bass and his colleague Erich Spangenberg. Diprivan® is the commercial name for propofol, … Continue Reading

Uncorroborated Declaration Not Sufficient to Avoid § 102(e) Prior Art

By Michael R. Weiner on Posted in Inter Partes Review, Sections 102/103
In EmeraChem Holdings, LLC v. Volkswagen Group of American, Inc. (Fed. Cir. June 15, 2017), the Federal Circuit determined that the Patent Owner’s uncorroborated declaration was insufficient to show that asserted prior art under pre-AIA 35 U.S.C. § 102(e) represented the work of the same inventive entity as the challenged claims, and with respect to certain … Continue Reading

Different Invalidity Conclusions by PTAB and Federal Courts Prohibited in Inter Partes Reexamination But Permissible in IPR

By Kate Nuehring Su on Posted in Inter Partes Review, Sections 102/103
In Fairchild (Taiwan) Corp. v. Power Integrations, Inc., Appeal 2017-1002 (Fed. Cir. Apr. 21, 2017), the Federal Circuit determined that no inter partes reexamination proceeding can be brought or maintained on issues that a party raised or could have raised in a since-concluded civil action. Specifically, once the court issues a final judgment in the civil … Continue Reading

Claim Construction Sends Duke’s Patent Back to PTAB for Reconsideration, In Part

thumbnail image of DNA strandBy Katherine L. Neville, Ph.D. on Posted in Appeals, Biotechnology, Inter Partes Review, Sections 102/103
In a recent appeal from a PTAB final written decision, the Federal Circuit reversed the Board’s determination that all claims of a Duke patent were unpatentable (Duke Univ. v. BioMarin Pharm. Inc., Appeal No. 2016-1106 (Fed. Cir., April 25, 2017). The court concluded that certain of the Board’s claim constructions were incorrect, and that others, while appropriate, … Continue Reading

Owner of Hot-Work Steel Processing Patent Burned by Its Own IPR Evidence

By Michael R. Weiner on Posted in Claim Construction, Inter Partes Review, Sections 102/103, Trial Procedures
In Rovalma, S. A. Böhler-Edelstahl GmbH & Co., No. 2016-2233 (Fed. Cir. May 11, 2017), the Federal Circuit vacated the PTAB’s final written decision and remanded the case for the PTAB to provide a further explanation for its determination that the challenged claims were obvious. According to the court, the PTAB’s decision lacked sufficient detail … Continue Reading

Federal Circuit Signals that PTAB Correctly Construed Most Signal Terms but Misconstrued one Other

By Ryan J. Schermerhorn on Posted in Appeals, Claim Construction, Inter Partes Review, Sections 102/103
In Wasica Finance GmbH v. Continental Automotive Sys., Inc., (Fed. Cir. Apr. 4, 2017), the Federal Circuit affirmed-in-part and reversed-in-part two PTAB final written decisions cancelling some but not all challenged claims  of U.S. Patent No. 5,602,524 (“the ‘524 patent”). The PTAB and court decisions are interesting because together they highlight the consequence of not … Continue Reading

Failing to Articulate Desired Claim Construction Before PTAB May Lead to Waiver

By Matthew R. Carey on Posted in Appeals, Claim Construction, Inter Partes Review, IPR, Sections 102/103
In the latest development in the ongoing patent battle between Google and SimpleAir Inc., a Federal Circuit panel agreed with SimpleAir that Google waived a claim construction it asserted on appeal because Google had failed to argue that construction before the PTAB. SimpleAir originally asserted a series of patents against Google, including U.S. Patent No. … Continue Reading

Presentation Not Qualified as a Printed Publication Because Audience Lacked Expertise

thumbnail image of DNA strandBy Lynn L. Janulis, Ph.D. on Posted in Biotechnology, Inter Partes Review, IPR, Sections 102/103
In a recent final written decision (Trustees of the University of Pennsylvania v. Coalition for Affordable Drugs VIII, LLC, IPR2015-01835, Paper No. 56 (PTAB Mar. 6, 2017)), the Board determined that the Coalition for Affordable Drugs (“Petitioner”) failed to demonstrate that claims 1-10 of U.S. Patent No. 8,618,135 (“the ’135 patent) were obvious. The claims … Continue Reading

PTAB Grants Hospira Petition to Institute IPR of Genentech Antibody Purification Patent

thumbnail image of DNA strandBy Heather R. Kissling on Posted in Biotechnology, Inter Partes Review, IPR, Sections 102/103
IPRs are an attractive option for biosimilar applicants to clear the patent landscape before delving into litigation under the Biologics Price Competition and Innovation Act of 2009 (BPCIA), which is still in its infancy.  Roche’s Herceptin® (trastuzumab) is a prime target for biosimilar makers, accounting for sales of over $6.5 billion in 2015.  Mylan, Celltrion, … Continue Reading

Evidence of Secondary Considerations Fails to Establish Nexus to Challenged Claims

By William K. Merkel, Ph.D. on Posted in Inter Partes Review, IPR, Sections 102/103
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. … Continue Reading

Teaching Away for Dummies

By Marshall Gerstein on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Meiresonne v. Google, Inc., No. 2016-1755 (Fed. Cir. Mar. 7, 2017), the Federal Circuit affirmed the PTAB’s final written decision in IPR2014-01188 that the challenged claims in U.S. Patent No. 8,156,096 (the “’096 patent”) are unpatentable as obvious over the 1997 book “World Wide Web Searching for Dummies, 2nd Edition” by Brad Hill (“Hill”) and … Continue Reading

Joinder Does Not Prevent Application of IPR Estoppel Provision

By Ryan J. Schermerhorn on Posted in Appeals, Estoppel, Inter Partes Review, IPR, Joinder, Sections 102/103
A little more than a month after the Delaware district court narrowly interpreted the IPR estoppel provision to suggest that it may not be necessary to include all known grounds so as to avoid estoppel in district court litigation, the same court issued a decision suggesting that the IPR estoppel provision may not be so … Continue Reading

CFAD Fails to Knock Out 4 Acorda Patents to Multiple Sclerosis Drug

thumbnail image of DNA strandBy Katherine L. Neville, Ph.D. on Posted in Biotechnology, Inter Partes Review, IPR, Sections 102/103
A recent set of final written decisions in four IPRs against Acorda Therapeutics puts more marks in the loss column for Kyle Bass and the Coalition for Affordable Drugs.  In IPRs 2015-01850, -01853, -01857 and -01858 (Coalition for Affordable Drugs v. Acorda Therepuatics Inc.), the Coalition for Affordable Drugs (CFAD) requested review of Acorda Therapeutics … Continue Reading

Federal Circuit to PTAB: Prior Art Cannot Anticipate Absent Disclosure of All Claimed Features

By Sandip H. Patel on Posted in Inter Partes Review, Sections 102/103
In Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., No. 2016-1900 (Fed. Cir. Mar. 14, 2017), the Federal Circuit issued a precedential opinion explaining that a prior art reference cannot anticipate a patent claim if the reference does not disclose all claimed features. That straightforward explanation of black letter law was prompted by a PTAB … Continue Reading

Secondary Considerations of Non-obviousness Retain Some Vigor

By William K. Merkel, Ph.D. on Posted in Inter Partes Review, IPR, Sections 102/103
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 … Continue Reading

Coalition for Affordable Drugs Fails to Knock Out Biogen’s Tecfidera® Patent

By Eric M. Brusca, Ph.D. on Posted in Inter Partes Review, Sections 102/103
On March 21, 2017, the PTAB refused to cancel claims of a Biogen MA Inc. (Biogen) patent covering multiple sclerosis drug Tecfidera® during IPR2015-01993, which was instituted in response to a petition filed by the Coalition for Affordable Drugs V LLC (CFAD), a group started by hedge fund manager Kyle Bass. Biogen’s U.S. Pat. No. … Continue Reading

Another VIMOVO® Patent Survives Challenge by Coalition for Affordable Drugs – Updating the CFAD Scorecard

By Heather R. Kissling on Posted in Inter Partes Review, IPR, Sections 102/103
In the spirit of “if at first you don’t succeed, try, try again,” the Coalition for Affordable Drugs (CFAD) challenged a fourth Orange Book-listed patent relating to VIVOMO®, Horizon Pharma’s naproxen/ esomeprazole product.  While denying CFAD’s previous three petitions, the PTAB instituted inter partes review for U.S. Patent No. 8,945,621.  Despite CFAD’s success at the … Continue Reading

Federal Circuit Finds Portion of Board’s Obviousness Decision Supported by Substantial Evidence Despite Reduced Effectiveness of Combined Prior Art References

By Kate Nuehring Su on Posted in Appeals, Inter Partes Review, IPR, Sections 102/103
In Slot Speaker Techs., Inc. v. Apple Inc., Nos. 2015-2038, 2015-2039 (Fed. Cir. February 17, 2017) (non-prec.), the Federal Circuit affirmed a portion of the PTAB’s decision in an IPR that concluded claims 1 and 2 of U.S. Patent No. 7,433,483 would have been obvious over a combination of two prior art references, but reversed … Continue Reading
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