In a recent non-precedential decision, Snap-on Inc. v. Milwaukee Elec.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 disputed claim term.
Continue Reading Claim Term Read Out by PTAB Constituted “Harmless Error”
Play the Claim
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 earlier DuPont patent. The Patent Office reached this conclusion because DuPont presented during the reexamination its unpublished data regarding experiments described in its earlier patent. The Federal Circuit affirmed.
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Rituxan Patent Spared by Failure to Establish Product Label as “Printed Publication”
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’ failure to establish the prior art status of the product label for RITUXIN®, which contains rituximab.
Continue Reading Rituxan Patent Spared by Failure to Establish Product Label as “Printed Publication”
Petitioner Failed to Show That Patent Owner’s Drug Product Package Insert Was a Printed Publication
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 to a patient an initial dose of 80 mg of adalimumab, followed by 40 mg of adalimumab every other week starting one week after the initial dose. The patent is one of several patents AbbVie owns that relate to its blockbuster autoimmune drug Humira.
Continue Reading Petitioner Failed to Show That Patent Owner’s Drug Product Package Insert Was a Printed Publication
Precedential and Informative Board Decision on Serial IPR Petitions
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 of its decision in General Plastic Industrial Co. v. Canon Kabushiki Kaisha, Case IPR2016-01357, Paper 19 (6 September 2017), addressing factors to be considered in determining whether to institute review for a serial, or “follow-on” petition. Petitioner General Plastic filed a first set of petitions seeking IPR of U.S. Patent No. 9,046,820 B1 (“the ’820 patent”) and U.S. Patent No. 8,909,094 B2 (“the ’094 patent”). Institution of a trial was denied for each petition based upon the merits.
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PTAB Gets A Math Lesson
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.
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A Split Federal Circuit Panel “at Once Envisaged” Different Conclusions of Anticipation
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 decision with one judge dissenting—that the contested claims were not invalid for anticipation, determining that the factual findings of the Board’s majority were supported by substantial evidence. But, in dissent, Judge Newman criticizes the panel majority for misperceiving the law of anticipation and finding that a person of skill in the art would not “at once envisage” the claimed arrangement of limitations due to the breadth of disclosure in the prior art.
Continue Reading A Split Federal Circuit Panel “at Once Envisaged” Different Conclusions of Anticipation
Avoid Creating Bad Blood with the Board
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 learned of the earlier examination from the patent owner, not the petitioner who was obliged to advise the Board of “related matters.”
Continue Reading Avoid Creating Bad Blood with the Board
Breadcrumbs Lead Federal Circuit to “Inurement”
“Inurement,” \i-ˈnu̇r-mənt, -ˈnyu̇r\ noun :in patent law the concept that the action of another may inure to one’s benefit, esp. where the actions of another in reducing an invention to practice may be attributed to the named inventor for purposes of establishing priority of invention.
Continue Reading Breadcrumbs Lead Federal Circuit to “Inurement”
Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable
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 it reinforces the bounds of the broadest reasonable interpretation claim construction standard the Patent Office must apply when assessing patentability, bounds that do not encompass the broadest possible interpretation.
Continue Reading Federal Circuit Again Reminds PTAB that BRI Must Be Reasonable