On March 5, 2019, the USPTO hosted a rare and special event in recognition and celebration of female inventors and the contributions of women in science, technology, engineering, and mathematics (“STEM”). The celebration commenced with opening remarks from Laura A. Peter, Deputy Director of the USPTO, followed by keynote speeches from Congresswoman Martha Roby, Secretary
Patent
IPR Petitioner “Lost” Standing to Appeal to Federal Circuit By Abandoning Development of Proposed Biosimilar Before Appeal Was Completed
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.…
Two Asserted Lantus Patents Cancelled—Commercial Success Evidence Insufficient Because of Blocking Patents
On December 12, 2018, the U.S. Patent and Trademark Appeal Board (PTAB) ruled in favor of Mylan in its inter partes review (IPR) proceedings. It found all claims of Sanofi’s Lantus formulation patents (U.S. Patent Nos. 7,476,652 and 7,713,930) unpatentable as obvious on numerous grounds, and held that despite over $2 billion in annual sales,…
PTAB Prepares to Convene its First Precedential Opinion Panel to Address Joinder Under 35 U.S.C. § 315(c)
The Patent Trial and Appeal Board (“the PTAB” or “the Board”) is preparing for its first instance of the newly created Precedential Opinion Panel (POP). Proppant Express Invs., LLC v. Oren Techs., LLC, IPR2018-00914, Paper 24 (PTAB Dec. 3, 2018). Interested parties may have had a busy holiday season, because initial briefing was due…
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…
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. —…
Federal Circuit: No Tribal Sovereign Immunity in IPRs
On Friday, July 20, 2018, the Federal Circuit, in a precedential opinion, affirmed the Patent Trial and Appeal Board’s (“PTAB’s”) decision that tribal sovereign immunity does not apply in inter partes review (“IPR”) proceedings and that the U.S. Patent & Trademark Office (“USPTO” or “the Office”) has the authority to decide the validity of…
Another Lesson in Timing for Disclaimers in CBM Reviews
The Patent Trial and Appeal Board (“the Board”) recently held that Customedia Technologies, LLC (“Customedia”) could not moot the CBM proceeding with a post-institution disclaimer of the claims found to recite a financial activity element. Dish Network Corp. v. Customedia Techs., LLC, CBM2017-00023, Paper 48 at 23 (P.T.A.B. June 11, 2018).
A patent is…