On October 13, 2020, the Supreme Court granted petitions for certiorari filed by the United States (in No. 19-1434), Smith & Nephew, Inc. (in No. 19-1452), and Arthrex, Inc. (in No. 19-1458) regarding the appointments of the
Life Science Legal Report
Significant Patent Decisions and Developments Affecting The Life Sciences Industry
Latest from Life Science Legal Report - Page 3
Method Claims Relying On A Naturally-Occurring Phenomenon Are Patent-Eligible Where They Recite “Human-Engineered Parameters”
On August 3, 2020, the Federal Circuit (Judges Lourie, Moore, and Reyna (dissenting)) (“the Court”) granted a petition for panel rehearing and issued a modified opinion (“Mod. Op.”) that maintained its prior patent-eligibility determination in Illumina, Inc. v. Ariosa Diagnostics,…
New PTAB Informative Decisions: Applying the Fintiv Factors in View of Parallel District Court Litigation
The Patent Trial and Appeal Board (“Board”) recently designated two decisions as informative regarding discretionary denials of institution: Apple Inc. v. Fintiv, Inc., Case IPR2020-00019, Paper 15 (May 13, 2020), and Sand Revolution II, LLC v. Continental Intermodal Group…
Federal Circuit confirms that the PTAB can consider the patent eligibility of substitute claims proposed during an IPR
In Uniloc 2017 LLC v. Hulu, LLC, No. 2019-1686 (Fed. Cir. July 22, 2020), the Federal Circuit considered whether the AIA permits the PTAB to reject substitute claims proposed during an IPR for patent ineligibility under § 101.…
PTAB Issues Precedential Decision to Clarify 35 U.S.C. § 317(b) Collateral Agreements, and Three Informative Decisions
On Thursday, June 11, 2020, the PTAB designated one decision as precedential and three decisions as informative, on issues including: 1) the statutory scope of confidential settlement agreements, 2) design patent ornamentality, 3) terminating a proceeding having a pending motion…
USPTO announces proposed rule changes on presumptions at institution and briefing permitted for patent owners during trial, among others
On May 26, 2020, the USPTO announced several proposed rule changes for IPR, PGR, and CBM proceedings. If implemented, the proposed rules would:
- Eliminate the presumption in favor of petitioners at the institution stage. The Board began allowing patent owners
…
PTAB Precedential Decision Offers Guidance on Discretionary Denials of Institution in Light of Co-Pending Litigations
The Patent Trial and Appeal Board (“the Board”) recently designated Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020), as precedential. The decision provides practitioners a six-factor analysis that the Board will employ when assessing whether to apply…
Federal Circuit Reverses PTAB’s Precedential Opinion Panel on Aspects of Joinder
In a previous post, we reported that the PTAB’s Precedential Opinion Panel (POP) tackled issue joinder in Proppant Express Investments v. Oren Techs. IPR2018-00914, Paper 24 at 2.
As background, in Proppant, the POP addressed the following issues:…
Recent Precedential and Informative Decisions Clarify Standard for Discretionary Denials of Institution
The Patent Trial and Appeal Board (“the Board”) recently provided guidance to practitioners on its discretion to deny institution under 35 U.S.C. § 325(d) and § 314(a) by designating three decisions as informative or precedential.[1] Under 35 U.S.C. §…
The Threshold Showing Of Prior Art Status: PTAB’s New Precedential and Informative Decisions
On April 7, 2020, the Patent Trial and Appeal Board (“PTAB”) designated one decision as precedential and four decisions as informative, all relating to the topic of prior-art status. Overall, the precedential decision clarifies the different standards for establishing…