We wrote previously regarding Incyte Corp. v. Concert Pharms., Inc., IPR2017-01256, in which the Board reached different conclusions regarding the availability of two pieces of prior art, over a dissent by Judge Fitzpatrick.  Regarding art referred to as the Concert Backgrounder, the Board’s earlier ruling found public accessibility where the Backgrounder was 1) identified on a cached WebCite page, 2) cited in an International Search Report for a patent application, and 3) used in a law review article that cited the WebCite page.  In a new decision in the same case, the Board ruled on Petitioner’s motion for additional discovery regarding public availability of the Concert Backgrounder, granting the discovery in part.  Interestingly, the Board declined to allow discovery that it viewed as changing the Petitioner’s theory of public availability of the art. Continue Reading Granting A Motion For Discovery, Board Bars Changes In Theory Of The Evidence

During the week of July 9, the Board issued four decisions in Technology Center 1600, three decisions denying institution of inter partes review and one Final Decision finding the challenged claims patentable. In addition to these four decisions the Board, in ABS Global, Inc. v. XY, LLC, No. IPR2017-02184, also granted Patent Owner’s request for an adverse judgement. The four decisions are as follows:

Continue Reading PTAB Tech Center 1600 Round-up: Week of July 9-13, 2018

During the week of June 18-22, 2018, the Patent Trial and Appeal Board issued two decisions in Tech Center 1600 denying institution of IPR petitions.  The petitions were filed by Samsung Bioepis Co. Ltd. (“Bioepis”) against Genentech, Inc. (“Genentech”), and Initiative for Medicines, Access & Knowledge (I-MAK), Inc. (“I-MAK”) against Gilead Pharmasset LLC (“Gilead”), respectively.  The decisions follow.

Continue Reading PTAB Tech Center 1600 Round-Up: Week of June 18-22, 2018

Other than quickly granting Petitioner’s unopposed motion to dismiss with prejudice in Pfizer, Inc. v. Biogen, Inc., No. IPR2018-00231 (Decision Entered June 6, 2018), during the week of June 4, the Patent Trial and Appeal Board issued three decisions in TC 1600, two denying institution of IPR petitions filed by Sandoz, Inc. and Sanofi Pasteur, Inc., respectively, and one final decision finding all challenged claims unpatentable in an IPR filed by Acrux DDS Pty Ltd., joined to an IPR filed by Argentum Pharmaceuticals LLC.  The decisions are as follows: Continue Reading PTAB Tech Center 1600 Round-up: Week of June 4-8, 2018

At the end of a week shortened by the Memorial Day holiday, the PTAB (“Board”) issued just two decisions in Technology Center (TC) 1600 during the week of May 28.  The Pfizer decision hammers home that hindsight is not always 20/20, and there is no place for such bias in an obviousness analysis, while the shorter Roquette Freres decision serves to remind us of the old adage ‘mean what you say and say what you mean.’ Continue Reading Hindsight Is Not 20/20: PTAB Technology Center 1600 Decision Round-Up: Week of May 28 – June 1, 2018

In a final written decision in April 2017, the PTAB found that Petitioner did not satisfy its burden of proving claims of U.S. Patent No. 8,618,135 (“the ’135 patent”) were unpatentable in part because the PTAB found a slide deck presented to business persons was not prior art.  In Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania, IPR2015-01f835, Paper No. 56 (PTAB March 6, 2017) Petitioner argued that the ’135 patent was unpatentable over a combination of prior art that included a slide deck prepared by Evan Stein, M.D., Ph.D., for PPD, Inc. (“Stein”).

Stein was presented during Analyst Day at PPD, Inc. live and via webcast, and a hyperlink was distributed.  Moreover, Stein was reported in Pink Sheet, a news webpage.  In asserting Stein was prior art, Petitioner alleged Stein was “targeted to financial analysts, investors, and skilled artisans interested in drug discovery and development.”  Petitioner also asserted that the presentation was publicized for weeks, and that skilled artisans would have taken great interest in it.  Continue Reading Presentation Directed Toward Business Persons, Rather Than Skilled Artisans, Did Not Qualify As Prior Art