Monthly Archives: January 2019

In re: Ikeda Food Research Co., Ltd.

Posted on January 31, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2624 WALLACH, TARANTO, HUGHES January 29, 2019 Non-precedential Brief summary: Board decision affirming the rejection of claims directed to method for measuring blood glucose using a biosensor as obvious due to inherent disclosure by the prior art affirmed. … Continue reading →

Posted in Inherency, Obviousness | Leave a comment

Mark A. Barry v. Medtronic, Inc.

Posted on January 30, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2463 PROST, MOORE, TARANTO January 24, 2019 Brief summary: DC and jury conclusions of no invalidity and infringement affirmed (e.g., the invention was not in “public use” as the use was experimental, no § 102(b) on-sale bar, no … Continue reading →

Posted in Anticipation (35 USC 102), Conception and Reduction to Practice, Experimental Use, Inducement to Infringe, Inequitable Conduct, Infringement, Preamble, Public Use | Tagged | Leave a comment

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. et al.

Posted on January 24, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-1284, -1787 DYK, MAYER, O’MALLEY May 1, 2017 (FC panel); June 25, 2018 (SCOTUS); Jan. 24, 2019 (SCOTUS) Update 2 (Jan. 24, 2019): Update 2 (Jan. 24, 2019): SCOTUS affirmed the FC panel decision, holding that “a commercial … Continue reading →

Posted in Anticipation (35 USC 102), On-Sale Bar | Leave a comment

Princeton Digital Image Corp. v. Office Depot Inc. et al.

Posted on January 23, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2597 (many others) DYK, TARANTO, STOLL January 22, 2019 Brief summary: FC panel concluded the DC’s judgment was not final and that it therefore lacked jurisdiction. Summary: Princeton (PDIC) licensed US 4,813,056 to Adobe with the promise “not … Continue reading →

Posted in Article III disputes, Attorney's Fees | Leave a comment

Nippon Suisan Kaisha Ltd. v. Pronova Biopharm Norge AS

Posted on January 18, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2620 (US 9,447,360) Post-Grant Review PGR2017-00033 Final Written Decision (January 16, 2019) Brief summary: Board PGR decision finding claims 1-21 and 26 of Nippon’s fish oil-related claims unpatentable for indefiniteness, anticipation and obviousness affirmed (claims 22-25 were cancelled). … Continue reading →

Posted in Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Obviousness, Obviousness-Teaching Away | Leave a comment

In Re: Guild Mortgage Company

Posted on January 17, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2620 MOORE, REYNA, CHEN January 14, 2019 Brief summary: Board decision affirming the examiner’s refusal to register Guild’s proposed mark due to a likelihood of confusion vacated and remaned because the Board failed to address evidence regarding the … Continue reading →

Posted in Trademarks | Leave a comment

RealTime Data, LLC, DBA IXO vs. USPTO

Posted on January 15, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2018-1154 (IPR2016-00783) DYK, TARANTO, STOLL January 10, 2019 Brief summary: Board IPR decision finding RT’s patent invalid for obviousness affirmed. Summary: RealTime’s (RT) appealed Board final written decision (FWD) finding the challenged claims of US 6,597,812 relating to … Continue reading →

Posted in Anticipation (35 USC 102), Claim Construction, Claim Differentiation, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

Amerigen Pharmaceuticals Ltd. v. UCB Pharma GmbH

Posted on January 14, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-2596 (IPR2016-01665) LOURIE, CHEN, STOLL January 11, 2019 Brief summary: Board decision finding UCB’s ‘650 patent relating to Pfizer’s Toviaz product was not shown invalid for obviousness affirmed. UCB’s motion to dismiss for lack of standing since Amerigen’s … Continue reading →

Posted in Article III disputes, Generics / ANDA, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

AC Technologies S.A. v. Amazon.com et al.

Posted on January 10, 2019 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2018-1433 (IPR2015-01802) MOORE, SCHALL, STOLL January 9, 2019 Brief summary: Board’s reconsideration after FWD found not to violate AC’s due process since Board was obligated to consider all grounds and AC had an opportunity to respond. Summary: AC … Continue reading →

Posted in Anticipation (35 USC 102), Inter Parties Review (IPR), IPR, Negative Limitations | Leave a comment

Concert Pharm., Inc. v. Incyte Corp.

Posted on January 9, 2019 by Patrick J. Halloran, Ph.D., J.D.

Post-Grant Review PGR2017-00034 (U.S. Pat. No. 9,662,335 B2) Decision not to institute PGR January 11, 2019 Brief summary: Concert’s Petition to institute PGR of Incyte’s US 9,662,335 B2 regarding deuterated ruxolitinib was denied. Summary: Concert filed a Petition to institute … Continue reading →

Posted in Anticipation (35 USC 102), Enablement, Post-grant review, Priority, Written description | Leave a comment