In Titanium Metals Corp. v. Banner[1], the Federal Circuit notably held that it is “an elementary principle of patent law” that when a claim recites a numerical range, the claimed range is anticipated by a prior art reference that discloses a point or an example within that range. Accordingly, when seeking to anticipate
PTAB Decisions
PTAB Finds that Tribal Sovereign Immunity Does Not Apply to Review Proceedings
The Patent Trial and Appeal Board (“the PTAB”) ruled last Friday, February 23, 2018, that tribal sovereign immunity does not apply to the Saint Regis Mohawk Tribe. The issue has been percolating for months. For more background on the issue, see these previous blog articles – Tribal Sovereign Immunity: The New Defense Against IPRs? and…
Recent Decision Casts Doubt on the Fate of Tribal Sovereign Immunity at the PTAB
The topic of sovereign immunity was raised a number of times in inter partes review (IPR) proceedings in 2017, and it was cast into the national spotlight when Allergan transferred several patents for its dry-eye drug Restasis® to the St. Regis Mohawk Tribe in an attempt to shield them from PTAB review. But a recent…
PTAB Grants a Rare Rehearing in Cook Medical, LLC v. Boston Scientific Scimed, Inc
As set forth in the statute and upheld by the Supreme Court in Cuozzo,[1] the Patent Trial and Appeal Board’s (“PTAB” or “Board”) institution decisions are “final and nonappealable.”[2] Accordingly, a petitioner who fails to get a review instituted by the Board has limited options to maintain its validity challenge. One recourse…
Eli Lilly’s Pemetrexed Patent Survives IPR Challenge
On October 5, 2017, the Patent Trial and Appeal Board (“Board”) issued a final written decision in an inter partes review proceeding filed by Neptune Generics, LLC (“Neptune”) challenging the patentability of the claims in Eli Lilly & Co.’s Patent No. 7,772,209 (“the ’209 patent”). The Board held that Neptune failed to establish that claims…
IPRs Instituted for Three out of Four Patents at Issue in Abraxis v. Actavis Cancer Drug Dispute
Abraxis Bioscience, developer of cancer drug Abraxane®, filed suit against Actavis in April of 2016 following its receipt of notice that Actavis sought approval of a generic form of the drug from the FDA. The notice, called a Paragraph IV Certification, represented that Actavis believed the patents covering the drug were invalid, unenforceable, or would…
PTAB Issues First PGR Institution Decisions in Months
Post-grant review (PGR) is the least common post-issuance trial proceeding before the Patent Trial and Appeal Board (PTAB). Only 1% of petitions filed for post-issuance trial proceedings since the institution of the America Invents Act have been for PGRs, while 92% and 7% have been for inter partes review (IPR) and covered business method (CBM)…
PTAB Institutes Post-Grant Review of Pharmaceutical Patent
In an effort to combat pharmaceutical patent holders, several companies are now filing petitions for post-grant review on the theory that the claims are unpatentable for lacking sufficient written description and enablement. Although the number of post-grant review proceedings remains fairly small in comparison to inter-partes review proceedings, the recent increase in filings by generic…
When a Patent Owner is not a Patent Owner
Two IPRs (IPR2016-00663 and IPR2016-00669) filed on patents asserted against Microsoft in district court have ended with victory for the tech giant in an unusual procedural turn. Claims of the two patents were cancelled as a result of adverse judgment being entered against the owner of record, Global Technologies, Inc., after the PTAB deemed that…
The PTAB Places Emphasis on Reasonable Expectation of Success
In Coalition for Affordable Drugs VIII, LLC, v. The Trustees of the University of Pennsylvania, No. IPR2015-01835, Paper No. 56 (P.T.A.B. March 6, 2017), the PTAB concluded that despite evidence that the combinations of prior art references may have disclosed the claimed invention, an ordinary artisan would not have had a reasonable expectation of…