On February 20, 2019, the PTAB held that the statutory grace period for PTO papers and fees due on a weekend or federal holiday applies to the one-year deadline for filing IPR petitions under 35 U.S.C. § 315(b). Under longstanding PTO practice, the Office has accepted filings after a formal deadline if that deadline fell on a weekend or federal holiday and the filing is completed on the next Continue Reading PTAB Applies Statutory Grace Period for Weekends and Holidays to IPR Petitions
During the week of February 11, the Patent Trial and Appeal Board (“the Board”) issued several decisions in TC 1600, including two final written decisions in inter partes reviews (“IPR”). Summaries of the final written decisions follow. Continue Reading PTAB Tech Center 1600 Round-Up: Week of February 11-15, 2019
During the week of January 14–19, 2019, the Patent Trial and Appeal Board (“the Board”) issued 5 IPR institution decisions, 1 IPR final written decision, 1 PGR institution decision, and 1 PGR final written decision in TC 1600. Continue Reading PTAB Tech Center 1600 Round-Up: Week of January 14-19, 2019
During the week of January 21, 2019, the Patent Trial and Appeal Board (“the Board”) issued two decisions in TC 1600. In those, the Board denied institution of inter partes and post-grant reviews. Continue Reading PTAB Tech Center 1600 Round-Up: Week of January 21-25, 2019
We previously published a post on the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., and Helsinn’s subsequent petition for certiorari.
On January 22, 2019, the Supreme Court affirmed the Federal Circuit in a unanimous decision, holding that a commercial sale to a party who is required to keep the invention confidential can still constitute prior art Continue Reading Helsinn Update: The Supreme Court Preserves the Substance of the Pre-AIA On-Sale Bar
During the week of January 7, the Patent Trial and Appeal Board (“the Board”) issued four decisions in TC 1600, one denying institution of inter partes review (“IPR”) and three final written decisions. Summaries of the decisions follow: Continue Reading PTAB Tech Center 1600 Round-Up: Week of January 7-11, 2019
In Amerigen Pharmaceuticals v. UCB Pharmaceuticals, the Federal Circuit held that a generic Abbreviated New Drug Application (“ANDA”) filer with a Paragraph III certification to an Orange Book-listed patent has standing to appeal decisions from the Patent Trial and Appeal Board (“the Board”). Case No. 17-2529, Doc. 54, January 11, 2019 (the “Decision”). In this case, Amerigen was a Petitioner in inter partes review proceedings involving U.S. Patent No. 6,858,650 (“the ’650 patent”). The Board found the challenged claims not unpatentable, and Amerigen appealed. On appeal, UCB argued that Amerigen lacked standing to appeal because Amerigen had filed a Paragraph III certification with its ANDA. The Federal Circuit disagreed.
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 10, 2018, the Board issued several Final Written Decisions and institution decisions in Technology Center 1600. The decisions are summarized below: Continue Reading PTAB Tech Center 1600 Round-Up: Week of December 10-14, 2018
Today, the U.S. Patent and Trademark Office announced “revised guidance for subject matter eligibility under 35 U.S.C. § 101,” and “guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions.” The guidance documents are available in the Federal Register and will take effect on Monday, January 7, 2019. Continue Reading USPTO Announces Revised Guidance for Sections 101 and 112