Tag Archives: Obviousness

Tradeshow Catalog Qualifies as Prior Art

In a previous blog post, we reported that in a final written decision on October 26, 2016, the PTAB concluded that GoPro, Inc. (GoPro) failed to demonstrate that the challenged claims in a patent owned by Contour IP Holding LLC (Contour) were unpatentable. IPR (IPR2015-01080; “the GoPro IPR”)  GoPro asserted that the challenged claims were … Continue Reading

PTAB Properly Applied the Printed Matter Doctrine

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

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

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

PTAB May Cite New References Not Cited in the IPR Petition

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

Contour of Soup Can Saves Gravity Feed Display Design Patent

Next trip to the grocery store, stop in the canned soup aisle and take a closer look at how the canned soups are displayed on the shelves. You may notice a gravity feed dispenser with a label area. Between 2002 and 2009, Petitioner Campbell Soup Co. purchased $31 million of Patent Owner Gamon’s gravity feed … Continue Reading

Claim Term Read Out by PTAB Constituted “Harmless Error”

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

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’ … Continue Reading

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 … Continue Reading

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 … Continue Reading

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

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

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

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

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

Assertion of “Routine Optimization” Without Additional Reasoning Insufficient to Support Obviousness Conclusion

Recent Federal Circuit decisions reversing or remanding PTAB holdings of obviousness have faulted the Board for failing to clearly articulate its reasoning.  See our previous posts here and here.  In In re Stepan Co., No. 2016-1811 (Fed. Cir. Aug. 25, 2017), a split CAFC panel vacated a PTAB ex parte appeal decision affirming an obviousness … Continue Reading

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

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

Secondary Considerations Again Fail to Shore Up Patent Estate

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

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

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

PTAB’s Conclusion of Obviousness Overturned as Lacking Sufficient Justification

In In re Schweickert, No. 2016-1266 (Fed. Cir. 2017), the Federal Circuit in a non-precedential opinion vacated the PTAB’s decision canceling patent claims in an ex parte reexamination as being obvious over prior art. The Federal Circuit determined that the PTAB’s conclusion of obviousness was based on no more than a broadly-stated assertion that the … Continue Reading

Kyle Bass Gets Fresenius’ Diprivan Claims Canceled in IPR

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
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