Guarding Against Conclusory Statements & Why It Matters Even More Under The...
A common deficiency highlighted in recent PTAB decisions denying institution of an IPR petition is that an expert declaration offers only “conclusory” statements in relation to one or more key aspects...
View ArticleReading The Cuozzo Tea Leaves: Best Practices Pending The Supreme Court's...
The Supreme Court of the United States heard oral argument today on claim construction in inter partes review (IPR) proceedings and the reviewability of institution decisions. On the claim construction...
View ArticleSurvey of Pharmaceutical IPRs Filed By Generic Drug Company Petitioners
We have reviewed a sub-group of 111 IPRs filed by generic drug companies against pharmaceutical patents to assess outcomes and trends. While our survey was not intended to capture every IPR filed by a...
View ArticleMagnum Offers New Path for Challenging AIA Decisions: Burden of Production
On July 25, 2016, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does...
View ArticleKeeping Up To Date On CRISPR – July 2016
CRISPR is a gene editing technique that promises to revolutionize genetic engineering, but already is raising ethical, business, and legal issues. This is the first in a monthly series of articles on...
View ArticleEstoppel Prevents Second IPR Petition Even When New References Were Missed By...
In a case that appears to be a case of first impression, the PTAB found in its decision denying institution in IPR2016-00781 that a final written decision in an earlier IPR created estoppel under 35...
View ArticleSovereign Immunity of State Universities: Can It Shield Them from AIA Patent...
In what appears to be a case of first impression, the PTAB is poised to rule on the question of whether state sovereign immunity prevents an IPR challenge from being maintained against a University of...
View ArticleFederal Circuit Finds IPR Petitioner Lacks Standing To Appeal
On January 9, 2017, in Phigenix, Inc. v. Immunogen, Inc., the Federal Circuit held that petitioner Phigenix lacked standing to appeal an adverse final written decision in an IPR. While acknowledging...
View ArticleFederal Circuit Again Reverses PTAB Obviousness Determination
In what is becoming a familiar basis for reversal of PTAB decisions, the Federal Circuit yet again reversed the PTAB for its failure to adequately explain the basis for combining multiple prior art...
View Article2017 Mid-Year Statistics Point to Continued Rise in IPR Petitions
March 31st marked the mid-point of the PTAB’s fiscal year and the release of mid-year statistics on AIA proceedings... ...One interesting trend is a continued increase in overall number of IPR...
View ArticleIs The Real IPR Institution Rate Higher When Petitioner Errors &...
We have previously noted that the increasing rate of pre-institution settlement may in part be responsible for the declining institution rate in IPR proceedings because stronger petitions may drive...
View ArticleKey Trends In Pharmaceutical IPRs Filed By Generic Petitioners
We reviewed a sub-group of two hundred and four (204) IPRs filed by generic drug companies against pharmaceutical patents to assess PTAB outcomes and key trends in dealing with this technology field....
View ArticlePharma Patents Assigned to Indian Tribe to Thwart Inter Partes Review
As we have previously reported, sovereign immunity of state universities (who are instruments of state government) has been used to avoid IPRs under the immunity clause of the US Constitution...
View ArticleCAFC Eases Amendment Process In IPR Proceedings
Today in Aqua Products, Inc. v. Matal, a fractured Court of Appeals for the Federal Circuit (CAFC) sitting en banc decided to flip the burden of persuasion onto petitioners in IPR proceedings to show...
View ArticleFoley & Lardner LLP Launches Legal Innovation Hub for NextGen Manufacturers
Our firm recently launched its Legal Innovation HubSM for NextGen Manufacturers, a major firm-wide initiative to provide access to customized service for companies operating in this area....
View ArticleU.S. Patent "Micro-Entity" Rules & Other Cost Savings Strategies: Do You...
The short answer is that a company or individual who already is qualified as a small entity (which entitles you to 50% off U.S. patent filing costs) may also qualify under the final rules issued by the...
View ArticleU.S. Patent Office Issues Guidance to Examiners on Supreme Court's Myriad...
Today the USPTO issued guidance (PTO_Myriad_Guidelines) to Examiners on how to apply the Myriad Supreme Court decision to applications under examination. The guidance states that claims drawn “solely...
View ArticleSupreme Court Decides Myriad Case: Synthetic DNA Held Patentable &...
Today the Supreme Court rendered its decision in the landmark Myriad case, holding that naturally occurring DNA segments are not patentable, but synthetic DNA segments are patent eligible based on the...
View ArticleNanoBusiness Panel on Patents Featuring View From the US Patent Office
At a recent nanotech conference hosted by the NanoBusiness Commercialization Association, we received an update on nanotech patent trends from Jerry Lorengo, a Group Director with the US Patent Office....
View ArticleU.S. PTAB Issues First Final Decision in an Inter Partes Review
On November 13, 2013, the U.S. Patent Trial and Appeal Board (PTAB) issued its first final decision in an inter partes review (IPR) proceeding brought by Garmin under the new administrative procedures...
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