In a decision denying institution of inter partes review rendered on February 5, 2020 , the Patent Trial and Appeal Board (“Board”) stated “there is no general rule that efficacy language in a claim is non-limiting.” Gilead Sciences, Inc. v.
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.
Latest from Life Science Legal Report - Page 4
The Continued Prior Art Accessibility Saga: Beware of “Bare Attorney Argument”
Building on one of the running topics on our blog—what a Petitioner must do to demonstrate public accessibility of a printed publication (see, for example, posts from Dec. 27, 2019; Dec. 2, 2019; Nov. 13, 2018; and…
PTAB states the “reasonable likelihood” standard applies to demonstrating public accessibility at the institution stage
It has become a significant open question in inter partes review proceedings what a petitioner must do to establish a reference as a printed publication. In a decision designated Precedential on December 20, 2019 (Hulu, LLC v. Sound View…
Challenges in Proving Up Publications as Prior Art During IPR
As we noted previously on the blog (see here, here, here, and here), issues proving up prior art during inter partes review proceedings arise regularly at the PTAB.
Our colleagues, Miguel Bombach and Brandon White, reviewed…
PTAB Issues Consolidated Trial Practice Guide
Today, the US Patent and Trademark Office issued a new, consolidated edition of its AIA Trial Practice Guide (November 2019), as announced on the PTO’s website.
As noted in the PTO’s announcement of the new Guide, “[t]he topics…
POP Tackles the Board’s Authority to Raise a New Unpatentability Ground Under the Motion to Amend Practice
By Mark Bailey
On August 20, 2019, a panel at the PTAB issued a Final Written Decision in Hunting Titan, Inc., v. DynaEnergetics GmbH & Co. KG that denied DynaEnergetics’s contingent motion to amend claims under the Motion to Amend Practice. IPR2018-00600…
Federal Circuit Holds that PTAB Judges Were Unconstitutionally Appointed
Last week, we wrote about Arthrex, Inc. v. Smith & Nephew, Inc. and described recent developments that suggested the Federal Circuit was leaning toward holding that all current PTAB judges had been unconstitutionally appointed in violation of the Appointments Clause of Article…
Constitutional Challenge under the Appointments Clause May Upend PTAB Proceedings
An order from the Federal Circuit on October 15 suggests the court may be close to holding that the PTAB has been operating in violation of the Appointments Clause, which could significantly disrupt PTO operations. The case presents important questions:…
PTAB Issues Precedential GoPro Decision That Even Service Of “Deficient” Complaint Starts IPR Time Clock
Today, the PTAB’s Precedential Opinion Panel issued a precedential decision holding that even a deficient pleading triggers the one-year IPR filing period. GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (PTAB Aug. 23, 2019) (Paper 38). …
Federal Circuit Rejects Latest Constitutional Challenge to Inter Partes Review
On July 30, the Federal Circuit issued a decision in Celgene Corporation v. Peter (Nos. 2018-1167, -1168, -1169, and -1171), where the patent owner argued that the PTAB’s authority to cancel claims through IPR amounted to an unconstitutional taking as…