Tag Archives: Inherent Anticipation

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 … Continue Reading

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

By Sandip H. Patel on April 6, 2017 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

Broader is Better for the Petitioner, but Inherency is Intrinsically Difficult

By Marshall Gerstein on November 16, 2015 Posted in Biotechnology, Inter Partes Review, Sections 102/103

Two recent PTAB final written decisions highlight the benefits that the “broadest reasonable interpretation” standard for claim construction provides to Petitioners, as well as the difficulty Petitioners face in proving inherent anticipation. The PTAB instituted two IPRs on the same patent: one on an anticipation ground, and another on an obviousness ground. The Petitioner failed … Continue Reading

Mind The Gap: The PTAB Will Not Bridge It For You

By Marshall Gerstein on September 24, 2015 Posted in Biotechnology, Inter Partes Review, Sections 102/103

Petitioners should beware gaps in their evidence and reasoning. Two DepoMed patents recently survived their second IPR challenge because the petitioner failed to meet its burden of proof. The PTAB rejected petitioner’s obviousness arguments as “overly vague and nonspecific,” concluding that petitioner failed to “explain persuasively why or how a person of ordinary skill in … Continue Reading

Gamble At Your Own Risk – The Danger Of Petition Overkill

By William K. Merkel, Ph.D. on July 20, 2015 Posted in Biotechnology, Claim Construction, Institution / Denial, Inter Partes Review, Post Grant Review, Sections 102/103

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