On July 22, 2022, the USPTO released a Request for Comments (RFC) seeking public input on Director review, Precedential Opinion Panel (POP) review, and internal circulation and review of Patent Trial and Appeal Board (PTAB) decisions.
As set out
Life Science Legal Report
Significant Patent Decisions and Developments Affecting The Life Sciences Industry
Life Science Legal Report, published by Perkins Coie LLP, focuses on legal developments and issues in the life sciences sector, including biotechnology, pharmaceuticals, and medical devices. The blog covers topics such as patent disputes, regulatory challenges, intellectual property rights, and post-grant proceedings before the Patent Trial and Appeal Board (PTAB). It also addresses legislative and policy changes affecting life sciences innovation, patent priority and inventorship controversies, inter partes review (IPR) estoppel, and guidance on real parties-in-interest in post-grant proceedings. The blog provides updates on significant cases, USPTO rulemaking, and congressional inquiries relevant to life science legal practice.
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Latest from Life Science Legal Report
PTAB Declares that Broad Institute, MIT, and Harvard Inventors Were First to Invent a CRISPR-Cas Gene Editing System to Alter Gene Expression in Eukaryotic Cells
On February 28, 2022, the Patent Trial and Appeal Board (“PTAB”) issued a decision on priority in an interference proceeding between the Broad Institute, Inc., Massachusetts Institute of Technology, and President and Fellows of Harvard College…
Federal Circuit Confirms the Broad Reach of IPR Estoppel
By Perkins Coie
Under 35 U.S.C. § 315(e), inter partes review (IPR) estoppel applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” In 2018, the Federal Circuit held in Shaw Industries Group, Inc. v.
Real Parties-In-Interest: Guidance On Who Is An RPI-And Who Is Not-In Post-Grant Proceedings
In a recent article, Real Parties In Interest Guidance On Who Is An RPI-And Who Is Not-In Post Grant Proceedings, linked here, Emily Greb and Maria Stubbing offer practical guidance and examine caselaw to clear some of the confusion and…
Senator Tillis Asks the PTO to Reconsider Fintiv Factor Two
On November 2, Senator Thom Tillis—the ranking member of the Senate Judiciary Committee’s Subcommittee on Intellectual Property—sent a letter to acting PTO Director Andrew Hirshfeld expressing concern about the PTAB’s use of “unrealistic” trial schedules to guide institution denials under…
How reliable are trial dates relied on by the PTAB in the Fintiv analysis?
In recent years, the Patent Trial and Appeal Board has frequently declined to institute IPRs for procedural reasons unrelated to a petition’s substantive strength. In particular, the Board has increasingly denied petitions in view of related, parallel litigation that it…
Federal Circuit Applies § 325(d) to Reexamination Requests
Section 325(d) gives the Patent Trial and Appeal Board (“PTAB”) discretion to deny a post-grant petition when “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). Both the PTAB…
Federal Circuit Issues Second GSK v. Teva Opinion On “Skinny” Label-Based Inducement
By Perkins Coie
The Federal Circuit’s August 5, 2021 ruling in GlaxoSmithKline LLC v. Teva Pharm. USA, Inc. (link to issued opinion), is an important development in the law of “skinny” generic pharmaceutical labels and induced infringement claims. See GlaxoSmithKline LLC v. Teva…
Post-Arthrex Interim Procedure for Director Review of PTAB Decisions
By Chris Marth
Delaware Magistrate Judge: Novel Induced-Infringement Claim Against Health Insurance Provider Survives Dismissal
By Perkins Coie
Last week, Magistrate Judge Jennifer Hall of the U.S. District Court for the District of Delaware recommended denial of two motions to dismiss and denied a motion to sever in a case involving a novel induced infringement claim against a…