In its seventh PGR institution, the PTAB recently decided for the first time that a patent asserting a pre-AIA effective filing date was eligible for post-grant review because it contained at least one claim that was only entitled to a post-AIA effective filing date. Although some claims were entitled to a pre-AIA effective filing date, … Continue Reading
Final written decisions, IPR2014-00781, IPR2014-01086, IPR2014-00821, IPR2004-00580, IPR2014-00802, for IPRs of several patents owned by Zond, LLC, which include rare dissenting opinions, illustrate different views of APJs concerning the requirements for establishing that a reference is a printed publication under 35 U.S.C. § 102(b). These decisions provide helpful guidance on how to address references whose … Continue Reading
When an alleged prior-art patent in an IPR claims priority to a provisional application, and the challenged patent claims priority to an intervening date between the provisional filing date and the non-provisional filing date of the reference patent, the burden is on the Petitioner to prove that the prior-art patent is entitled to the filing date … Continue Reading
Boehringer 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 … Continue Reading
Boehringer 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 … Continue Reading
The PTAB’s final written decision in Butamax Advanced Biofuels LLC v. Gevo, Inc. Case IPR2013-00539, Paper 33 (P.T.A.B. 2015), illustrates the importance of providing more than attorney argument to show that claims have written description support in a provisional application. … Continue Reading
The material contained on this blog is provided for informational purposes only and does not constitute legal advice. Views expressed are those of the author and are not to be attributed to Marshall, Gerstein & Borun LLP or any of its clients. The publication and receipt of any information contained on this blog does not create an attorney-client relationship with Marshall, Gerstein & Borun LLP or with any of its attorneys. Readers should not act upon any information on this site without seeking professional legal counsel.