Previously, Emily Greb posted on the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, Dir. U.S. Pat. & Trademark Off., 138 S. Ct. 1348 (2018), which held that when the Board institutes an inter partes review, it must
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 5
Supreme Court Prevents the Government from Challenging Patents in PTAB Proceedings
On June 10, 2019, the Supreme Court held that a federal agency is not a “person” who can file a petition for review of a patent under one of the three new proceedings created by the America Invents Act (“AIA”). …
FDA Provides More ANDA Exclusivity Information
By way of background,
Under the Drug Price Competition and Patent Term Restoration Act of 1984, also known as the Hatch-Waxman Amendments, a company can seek FDA approval to market a generic drug before the expiration of patents related…
Court Applies Post-Trial IPR Estoppel Where Final Judgment Didn’t Address All Obviousness Defenses
By Perkins Coie
In an April 11, 2019 order, Judge Andrews of the District of Delaware ruled that a Hatch-Waxman defendant’s obviousness defenses were precluded under 35 U.S.C. § 315(e)(2) even though the barring PTAB decision issued over a year after the court…
PTAB 1600 Tech Center Round-Up: Week of February 25-March 1
During the week of February 25, 2019, the Board issued six decisions in Technology Center 1600: five instituting inter partes review (IPR) and one instituting post-grant review (PGR). The decisions are summarized as follows:…
PTAB Applies Statutory Grace Period for Weekends and Holidays to IPR Petitions
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…
Helsinn Update: The Supreme Court Preserves the Substance of the Pre-AIA On-Sale Bar
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,…
ANDA Filers with Paragraph III certifications = standing to appeal Inter Partes Review decisions according to Federal Circuit
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…
USPTO Announces Revised Guidance for Sections 101 and 112
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…
PTAB’s Precedential Opinion Panel Tackles Issue Joinder
In a previous post, we reported that in Proppant Express Investments v. Oren Techs., a panel of the PTAB held that 35 U.S.C. § 315(c) allows only joinder of other parties to an IPR, and not same-party joinder of new…