During the week of August 13, the Board issued one decision in Technology Center 1600, which denied institution of inter partes review. The decision is as follows: Continue Reading PTAB Tech Center 1600 Round-Up: Week of August 13-17, 2018
On August 13, 2018, the PTO published a public notice announcing the first update to the Office Patent Trial Practice Guide since its original introduction in August 2012. The update adds or substantially revises several procedural guidelines for trial proceedings—most notably, the Board will now permit sur-replies under the standard scheduling order in most cases. The update also addresses the role of expert testimony, motions to exclude and motions to strike, live testimony at oral hearing, and factors affecting the Board’s discretion to decline institution.
Details on key provisions in the Trial Practice Guide update are provided below. Continue Reading PTAB Issues Substantial Updates to the Patent Trial Practice Guide
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.
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
The Board issued three decisions in TC 1600 during the week of July 30, all denying institution of inter partes review. Summaries of the decisions follow.
On July 27, 2018, in GoPro, Inc., v. Contour IP Holdings LLC, the Federal Circuit overturned the Patent Trial and Appeal Board (“PTAB”) in its most recent decision on what constitutes publicly available prior art. In GoPro the Court held that a catalog distributed at a trade show open only to dealers was publicly available prior art.
The Patent Trial and Appeal Board issued one decision in TC 1600, which denied institution of an IPR. The petition was filed by Argentum Pharmaceuticals LLC (“Argentum”) against Merck Patentgesellschaft (“Merck”). The decision is as follows:
Continue Reading PTAB Tech Center 1600 Round-Up: Week of July 23-27
Blackbird Tech LLC sued ELB Electronics for infringing a patent claim related to retrofitting existing light fixtures with a more energy-efficient lighting apparatus. Blackbird Tech LLC v. ELB Electronics, Inc., No. 17-1703, slip op. at 3 (Fed. Cir. July 16, 2018). The asserted claim read as follows:
During the week of July 16, the Patent Trial and Appeal Board (“the Board”) issued one decision in Technology Center 1600. A summary of the decision follows:
On July 13, 2018, in Jazz Pharms., Inc. v. Amneal Pharms., LLC, (Case Nos. 2017-1617, -1673, -1674, -1675, -1676, -1677, -2075), the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB”) holding that certain FDA advisory meeting minutes, transcripts, and slides were publicly available such that the materials constituted prior art. We have previously discussed the PTAB’s public availability jurisprudence in Coalition for Affordable Drugs VIII, LLC v. The Trustees of the University of Pennsylvania, IPR2015-01835 where the PTAB held a presentation given to investors was not prior art. Continue Reading FDA Advisory Committee Materials Determined to be Publicly Available Prior Art