PTABWatch Blog

http://www.ptabwatch.com/author/ebrusca/

PTABWatch, provided by Marshall, Gerstein & Borun LLP, analyzes and reports recent developments concerning Post-Grant Proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), including Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) proceedings.

Recent Blog Posts

  • Your Supplemental Evidence is Timely, but is it Relevant to a Claim at Issue? PTAB Will Decide. Once a trial has been instituted at the PTAB, a party seeking consideration of supplemental evidence may file a motion in accordance with the following requirements: (1) the request for the authorization to file a motion to submit supplemental information must be made within one month of the date the trial was instituted; and (2) the supplemental information must be relevant to a claim for which the trial was instituted.  37 C.F.R. § 42.123(a). Mere satisfaction of these requirements for... More
  • Federal Circuit to PTAB (Again) – Explain Yourself!! The Federal Circuit has once again vacated and remanded a PTAB final written decision on the basis that the PTAB did not adequately explain its reasons for finding a claimed invention obvious.  In In re Nuvasive, Appeal No. 15-1670 (Fed. Cir. Dec. 7, 2016), the Federal Circuit reviewed the PTAB’s final written decision in IPR2013-00506 that concluded various claims of  NuVasive, Inc’s U.S. Patent No. 8,361,156 were invalid as obvious over a combination of prior art references.  The patent claims... More
  • Prior Art Made Available at Members Only Gatherings May Not Satisfy “Publically Accessible” Requirement Two recent PTAB decisions highlight important developments in qualifying a publication as a reference, available as prior art.  In one case, the PTAB concluded that a printed catalog did not qualify as a printed publication prior art because it was distributed only at a private tradeshow to persons not necessarily skilled in the art.  In the other case, the PTAB concluded that a video and associated slide presentation did not qualify as printed publications because these materials were distributed only... More
  • IPR Institution Denied Because Petitioner Used Hindsight Bias to Formulate Arguments On August 23, 2016, the PTAB denied Mylan Laboratories Limited’s (Mylan) petition for IPR (IPR2016-00627) against a patent owned by Aventis Pharma S.A. (Aventis). In doing so, the PTAB offered guidance regarding what is required to successfully make out a claim of obviousness regarding a new chemical compound. In particular, the PTAB’s decision offers insight into the threshold a petitioner will need to meet in order to establish that a person of ordinary skill in the art would have recognized... More
  • Been There, Done That: Petitioners Should Find Art and Arguments Not Previously Considered During Prosecution This blog has previously explained on July 23, 2015, December 10, 2015, and December 16, 2015 why it is important for parties to AIA trials to carefully consider the patent prosecution history.  Under 35 U.S.C. § 325(d), the Board has discretion to deny an AIA trial if “the same or substantially the same prior art or arguments previously were presented to the Office.”  The Board recently exercised that discretion in denying an inter partes review petition and, in doing so, provided... More
  • The Personal Touch: PTAB Grants Bass and Spangenberg IPR Petition On May 20, 2016, the PTAB granted Kyle Bass and Erich Spangenberg’s petition for IPR (IPR2016-00245) against a patent owned by Alpex Pharma SA (Alpex).  The petition sought cancellation of claims 1-9 of U.S. Patent No. 8,440,170, asserting that the claims were obvious in view of numerous references.  The claims of the ‘170 patent are generally directed to orally disintegrating tablets with a speckled appearance.  According to the ‘170 patent, the speckled appearance can be achieved by using colored granules of... More
  • It’s Complicated: PTAB Reinforces Notion That Petitioners Should Consider Expert Testimony in Complex Technology Areas This Blog previously highlighted the risks involved when a petitioner does not submit an expert declaration with their petition.  This risk may be lessened where the “the invention and prior art references are directed to relatively straightforward and easily understandable technology.” [Paper No. 41 at 17 n.6 of IPR2014-00169] (ruling in favor of petitioner despite its failure to present expert declaration until its Reply brief).  However, a petitioner should strongly consider submitting an expert declaration to support their arguments in... More
  • A Second Bite at the Apple? Kyle Bass’s CFAD is Awarded IPR Institution of Follow-on Petitions Remember when the PTAB denied institution of two IPR petitions filed by Kyle Bass’s Coalition for Affordable Drugs V LLC’s (CFAD) against Acorda Therapeutics, Inc. (Acorda)?  Well, if at first you don’t succeed, try citing different prior art!  In the two previous Acorda proceedings (IPR2015-00720 and IPR2015-00817), the PTAB rejected CFAD’s argument that posters displayed at a scientific conference qualified as prior art.  During prosecution, Acorda disclosed the posters in an Information Disclosure Statements (IDS).  But, in denying those petitions, the PTAB... More
  • PTAB Reminds Petitioners That Conclusions in Expert Declarations Must be Supported by Explanations On January 19, 2016, the PTAB denied Coalition for Affordable Drugs V LLC’s (CFAD) request for rehearing following the Board’s decision denying institution of IPR.  In IPR2015-01086, CFAD filed a petition requesting an IPR of claims 1–13 in Biogen International GmbH’s (Biogen) U.S. Patent No. 8,759,393.  The Board denied the petition and CFAD filed a request for rehearing on the (same) grounds of anticipation and obviousness.  As discussed below, the denial of the rehearing highlights the importance of supporting all... More
  • Federal Circuit: Patent Owners Must Consider Prior Art from Prosecution History in Motion to Amend On December 4, 2015, the Federal Circuit affirmed in a split opinion the Board’s final written decision in ScentAir Techs., Inc. v. Prolitec, Inc., IPR2013-00179, finding that the two claims of Prolitec’s U.S. Patent No. 7,712,683 (“’683 patent”) were unpatentable and denying Prolitec’s motion to amend.  Although several issues were addressed by the Board and Federal Circuit, perhaps of most interest is the court’s conclusion that the Board properly denied Prolitec’s motion to amend because Prolitic did not demonstrate patentability... More