Tag Archives: Prosecution History

Prior Art Made Available at Members Only Gatherings May Not Satisfy “Publically Accessible” Requirement

By Eric M. Brusca, Ph.D. on Posted in Inter Partes Review, Sections 102/103
On July 27, 2018, the Federal Circuit issued an opinion vacating the GoPro, Inc. decision discussed in the post below. On June 11, 2018, the Federal Circuit issued a decision vacating and remanding the Medtronic decision discussed in the post below. An updated discussion of the Medtronic decision is available here: PTAB Failed to Properly Apply … Continue Reading

IPR Institution Denied Because Petitioner Used Hindsight Bias to Formulate Arguments

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Inter Partes Review, Sections 102/103
On August 23, 2016, the PTAB denied Mylan Laboratories Limited’s (Mylan) petition for IPR (IPR2016-00627) against a patent owned by Aventis Pharma S.A. (Aventis). In doing so, the PTAB offered guidance regarding what is required to successfully make out a claim of obviousness regarding a new chemical compound. In particular, the PTAB’s decision offers insight … Continue Reading

Been There, Done That: Petitioners Should Find Art and Arguments Not Previously Considered During Prosecution

thumbnail image of DNA strandBy Eric M. Brusca, Ph.D. on Posted in Biotechnology, Inter Partes Review, Sections 102/103
This blog has previously explained on July 23, 2015, December 10, 2015, and December 16, 2015 why it is important for parties to AIA trials to carefully consider the patent prosecution history.  Under 35 U.S.C. § 325(d), the Board has discretion to deny an AIA trial if “the same or substantially the same prior art or … Continue Reading
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