On February 7, 2019, the Federal Circuit dismissed an appeal because the IPR petitioner, Momenta Pharmaceuticals, essentially “lost” its constitutional standing when – prior to completing its appeal to the Federal Circuit – it abandoned development of its proposed biosimilar after failed Phase 1 clinical trials. Momenta Pharm., Inc. v. Bristol-Myers Squibb Co., No.
Federal Circuit
Business as Usual for the USPTO and Federal Circuit Under the Partial Government Shutdown, At Least for Now
The United States government is currently in a partial shutdown due to a lapse in appropriated funding for a portion of the federal government. The partial shutdown began on December 22, 2018, and is currently in its fifth week. Two government organizations affected by the shutdown are (i) the Department of Commerce, which includes the…
The PTAB Rejects a “Benefits-Plus-Relationship” Standard For Determining Real Parties-in-Interest
The PTAB, on November 27, 2018, released the public version of Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883, Paper 29 (P.T.A.B. Oct. 11, 2018), finding membership in petitioner’s company plus only an interest in the outcome of the IPR fails to satisfy the AIT analysis for a real party-in-interest (“RPI”).
Realtime…
Assessing the Meaning of a Publicly Available “Printed Publication” in View of Acceleration Bay v. Activision Blizzard
When a non-patent literature (NPL) reference is used to challenge a patent, a key issue to be resolved is whether the NPL reference is a “printed publication” under 35 U.S.C. § 102. Several prior posts have addressed this question, such as here and here.
The Federal Circuit recently, on November 6, weighed in yet…
Implications of PTAB’s Transition to the Phillips standard for Claim Construction
The PTAB will soon implement a change in its claim construction standard in post-issuance reviews, moving from the broadest reasonable interpretation (“BRI”) standard to the standard articulated in the Federal Circuit’s opinion, Phillips v. AWH Corp.[1] We previously covered this on our blog here. The effects of the change may be significant in…
Another Graphical User Interface Patent Survives 101 Patent-Eligibility Challenge in Data Engine Technologies
In its recent decision Data Engine Technologies LLC v. Google LLC, No. 17-1135 (Fed. Cir. Oct. 9, 2018), the Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part the district court’s ruling on Google’s Fed. R. Civ. P. 12(c) Motion for Judgment on the Pleadings that all asserted claims of U.S. Patent Nos.…
Federal Circuit Confirms that New Evidence Before PTAB Sinks Claims that Survived ITC Action
A Federal Circuit opinion issued September 13, 2018, has affirmed a decision by the Patent Trial and Appeal Board (“PTAB” or “the Board”) that claims of U.S. Patent No. 8,714,977 (“the ’977 patent”) covering certain dental implants are unpatentable. The ’977 patent, assigned to Nobel Biocare Services AG (“Nobel”), was challenged by Instradent USA, Inc.…
Petitioner’s Reply May Expand Arguments to Address New Claim Constructions Adopted After Institution
In Ericsson Inc. v. Intellectual Ventures I LLC, the Court of Appeals for the Federal Circuit vacated and remanded a final written decision of the Patent Trial and Appeal Board (“the Board”) because the Board erred in not considering portions of Ericsson’s Reply regarding new claim constructions adopted by the Board after institution. —…
Voluntary Dismissal Without Prejudice Does Not Nullify § 315(b)’s Time Bar
On August 16, 2018, the en banc Federal Circuit held that 35 U.S.C. § 315(b) unambiguously triggers the one-year time bar to file an inter partes review (IPR) petition after a complaint is served, regardless of what may follow. In its decision, Click-to-Call Technologies, LP v. Ingenio, Inc., __ F.3d __, 2018 WL 3893119 (Fed.…
Using Theses as Prior Art at the PTAB
Based on recent Patent Trial and Appeal Board (“PTAB” or “the Board”) decisions, the best practice to establish an academic thesis as a printed publication in an IPR proceeding is to demonstrate that it has been indexed by subject matter and then corroborate the index date by independent evidence, or demonstrate that another publication can…