IPR petitioners Proppant Express Investments, LLC and Proppant Express Solutions, LLC (collectively, “PropX”) have a pending instituted inter partes review (IPR) on certain claims of U.S. Patent No. 9,511,929 (“the ’929 patent”). Unfortunately for PropX, it mistakenly grouped
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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Obviousness of Overlapping Ranges – The Burden-Shifting Framework Applies to Inter Partes Review: E.I. du Pont de Nemours & Co. v. Synvina C.V.
In the chemical and biological arts, it is common for patent challengers to allege obviousness based upon prior art disclosures of ranges combined with “routine optimization” by one skilled in the art. In E.I. du Pont de Nemours & Co.
USPTO Issues Claim Construction Final Rule for Patent Office Trials – In with Phillips, Out with BRI
This morning, the US Patent and Trademark Office issued its final rule implementing district court-style claim construction at the PTAB, replacing the “broadest reasonable interpretation” standard. The official text of the rule will publish in the Federal Register on October…
Federal Circuit again finds product catalog distributed at trade show to be “publicly accessible”
The Federal Circuit recently held that a product catalog distributed at a trade show was “publicly accessible,” and therefore qualified as prior art. In Nobel Biocare Services AG, v. Instradent USA, Inc., decided on September 13, 2018, the Federal Circuit…
Cautionary Tale to IPR Petitioners: Avoid Time Bar Pitfalls
Two recent decisions from the PTAB and Federal Circuit signal inter partes review (“IPR”) petitioners to be cautious of approaching too closely the one-year time bar set forth in 35 U.S.C. § 315(b). First, on August 14, 2018, the PTAB…
Arguments in Reply that Expand on Previously Argued Rationale Should Be Considered by the PTAB
On August 27, 2018, the Federal Circuit in Ericsson Inc. v. Intellectual Ventures I LLC, vacated the Patent Trial and Appeal Board’s (“PTAB”) final written decision in an inter partes review (IPR) and remanded for the PTAB to properly…
PTAB Issues Substantial Updates to the Patent Trial Practice Guide
On August 13, 2018, the PTO published a public notice announcing the first update to the Office Patent Trial Practice Guide since its original introduction in August 2012. The update adds or substantially revises several procedural guidelines for trial proceedings—most…
Granting A Motion For Discovery, Board Bars Changes In Theory Of The Evidence
We wrote previously regarding Incyte Corp. v. Concert Pharms., Inc., IPR2017-01256, in which the Board reached different conclusions regarding the availability of two pieces of prior art, over a dissent by Judge Fitzpatrick. Regarding art referred to as the…
Federal Circuit overturns PTAB: catalog distributed at a trade show found to be publicly available prior art
On July 27, 2018, in GoPro, Inc., v. Contour IP Holdings LLC, the Federal Circuit overturned the Patent Trial and Appeal Board (“PTAB”) in its most recent decision on what constitutes publicly available prior art. In GoPro the Court held…