During the week of December 17, 2018, the Patent Trial and Appeal Board (“the Board”) issued five decisions in TC 1600.  Those decisions instituted inter partes review (“IPR”) of five petitions, four of which involved related patents.  As detailed below, the Patent Owners did not substantively challenge the petitions at the Preliminary Response stage, but instead opposed institution on procedural grounds—namely, failure to name a real party in interest or duplicative issues under 35 U.S.C. § 325(d).

Merck Sharp & Dohme Corp. v. GlaxoSmithKline Biologicals SA, Nos. IPR2018-01229; IPR2018-01234; IPR2018-01236; and IPR2018-01237 (Decisions Granting Institution Entered December 18, 2018).  Merck Sharp & Dohme Corp. (“Merck”) filed four IPR petitions, Continue Reading PTAB Tech Center 1600 Round-Up: Week of December 17-21, 2018

During the week of December 3, 2018, the Board issued one decision in Technology Center 1600 denying institution of inter partes review:

  • Mylan Pharm. Inc. v. Bayer Intellectual Prop. GmbH, IPR2018-01143 (Decision Denying Institution of Inter Partes Review, December 3, 2018).  Petitioner Mylan challenged the patentability of claims 1-4 of U.S. Patent No. 9,539,218 (the ’218 patent) as obvious over Straub, Kubitza Abstracts, and Forsman.  Patent owner Bayer filed a preliminary response to the petition.  The Board exercised its discretion to deny the petition under 35 U.S.C. § 325(d) and 314(a).  The ’218 patent relates to a method of treating a thromboembolic disorder by a once-daily administration of a “rapid-release tablet” of a direct factor Xa inhibitor, e.g., rivaroxaban.  The Board denied the petition under 35 U.S.C. § 325(d) after finding that substantially the same prior art and arguments were previously presented to the Office and the Board in an ex parte appeal.  IP2018-01143, Paper 13 at 12.  The Board exercised its discretion to deny the petition under 35 U.S.C. § 314(a) after finding that a trial would be an inefficient use of Board resources due to the parallel district court case set for trial on April 1, 2019.  Id. at 13.  The Board emphasized three reasons for taking this step:  1) the district court proceeding was at an advanced stage; 2) the Board adopted the same claim construction as the district court; and 3) the prior art and expert testimony asserted in the petition overlapped extensively with those presented in the district court.  Id.

During the week of October 1, 2018, the Board issued seven Final Written Decisions and two institution decisions in Technology Center 1600.  The decisions are summarized as follows: Continue Reading PTAB Tech Center 1600 Round-Up: Week of October 1-5, 2018

During the week of September 17-21, 2018, the Board issued two decisions in Technology Center 1600, one instituting inter partes review and one final written decision finding the challenged claims had not been proven unpatentable.  The decisions are as follows: Continue Reading PTAB Tech Center 1600 Round-Up: Week of September 17-21, 2018

During the week of August 6, the Board issued nine decisions in Technology Center 1600, two denying institution of IPR, two Final Written Decisions finding the challenged claims not unpatentable, two Final Written Decisions finding the challenged claims unpatentable, and two terminating inter partes review (“IPR”) proceedings, in whole or in part.  The decisions follow.

Continue Reading PTAB Tech Center 1600 Round-up: Week of August 6-10, 2018