Monthly Archives: June 2019

DC findings of infringement and validity of one UCB rotigotine patent and invalidity of another as anticipated by use in a single patient in a clinical trial affirmed

Posted on June 28, 2019 by Patrick J. Halloran, Ph.D., J.D.

UCB, Inc. et al. v. Watson Laboratories, Inc. et al. Docket No. 2018-1397, -1453 TARANTO, SCHALL, CHEN June 24, 2019 Brief summary: DC decisions finding that UCB’s ‘434 patent was infringed under DOE and not invalid and UCB’s ‘414 patent … Continue reading →

Posted in Anticipation (35 USC 102), Generics / ANDA, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

Time bar not triggered by change in real party in interest, Board claim construction/ invalidity determinations of Mayne’s claims affirmed

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

Mayne Pharma Int. v. Merck Sharpe & Dohme (MSD) (USPTO as intervenor) Docket No. 2018-1593 (IPR2016-01186) LOURIE, DYK, O’MALLEY June 21, 2019 Brief summary: Board IPR time bar and claim construction/invalidity determinations affirmed. Summary: Mayne appealed the USPTO’s (Board’s) IPR … Continue reading →

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

IPR obviousness finding vacated for erroneous motivaton to combine and reasonable expectation of success determinations

Posted on June 20, 2019 by Patrick J. Halloran, Ph.D., J.D.

Samsung Electronics Co., Ltd. v. UUSI, LLC, DBA NARTRON Docket No. 2018-1310 (IPR2016-00908) NEWMAN, LOURIE, DYK June 18, 2019 Non-precedential Brief summary: IPR obviousness decision vacated and remanded (e.g., “improve similar devices in the same way, using the technique is … Continue reading →

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Privity and RPI relationships arising after IPR filing but before institution can trigger §315(b) time-bar

Posted on June 19, 2019 by Patrick J. Halloran, Ph.D., J.D.

Power Integrations, Inc. v. Semiconductor Components Industries, LLC (“Fairchild”) Docket Nos. 2018-1607 (IPR2016-00809) PROST, REYNA, STOLL June 13, 2019 Brief summary: IPR was time barred under §315(b) “because Fairchild was an RPI at the time the IPR was instituted, even … Continue reading →

Posted in Inter Parties Review (IPR), IPR | Leave a comment

Federal Circuit invalidates reissue patent invalid for lack of written description (WD)

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

Forum US, Inc. v. Flow Valve, LLC et al. (FC Docket No. 2018-1765; June 17, 2019) ~ Forum filed DJ action, DC granted SJ to Forum for lack of WD, FV appealed ~ U.S. 8,215,213 relates “to supporting assemblies” (“arbors”) … Continue reading →

Posted in Reissue, Uncategorized, Written description | Leave a comment

State sovereign immunity does not apply to IPR proceedings, Federal Circuit decides

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

Regents of the Univ. of Minnesota v. LSI Corp. et al. (Gilead Sci. Inc., intervenor) Docket Nos. 2018-1560-65 (IPR2017-01068, -01186, -01197, -01200, -01213, -01214, -0129) DYK, WALLACH, HUGHES June 14, 2019 Brief summary: FC panel concluded “that state sovereign immunity … Continue reading →

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

IPR decision finding mesalamine method claims obvious affirmed, Salix’s appeal of DC non-infringment holding dismissed

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

Dr. Falk Pharma GmbH v. Generico, LLC et al., Salix Pharm. v. Mylan Pharm. Docket 2017-2312 (IPR2016-00297, -01386, -01409); 2017-2636, 2018-1320 LOURIE, LINN, WALLACH June 12, 2019 Non-precedential Brief summary: Board’s IPR obviousness determination affirmed and Salix’s appeal of DC … Continue reading →

Posted in Claim Construction, Generics / ANDA, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

Board IPR nonobviousess decision vacated for failing to consider “different limitation”

Posted on June 11, 2019 by Patrick J. Halloran, Ph.D., J.D.

Packers Plus Energy Services Inv. v. Baker Hughes Oilfield Operations, LLC Docket 2018-1490 (IPR2016-01099) LOURIE, LINN, WALLACH June 10, 2019 Non-precedential Brief summary: IPR decision of nonobviousness affirmed for certain claims but vacated as one other Summary: Packer Plus (PP) … Continue reading →

Posted in Claim Construction, Inter Parties Review (IPR), IPR, Obviousness | Leave a comment

Federal Circuit affirms PTAB IPR decision finding Arch/Dana-Farber’s “method of improving chemotherapeutic intervention” claims invalid for obviousness

Posted on June 6, 2019 by Patrick J. Halloran, Ph.D., J.D.

Arch Dev. Corp., Dana-Farber Cancer Inst., Inc. v. OSI Pharm., LLC and Genentech, LLC Docket 2018-1485 (IPR2016-01034) PROST, LOURIE, BRYSON May 9, 2019 Brief summary: PTAB IPR final written decision finding Arch’s claims invalid for obviousness affirmed. Summary: The PTAB … Continue reading →

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Federal Circuit affirmed DC claim construction finding that “100% by weight” limitation can include “residual moisture”

Posted on June 5, 2019 by Patrick J. Halloran, Ph.D., J.D.

E.I. Du Pont De Nemours & Co. v. Unifrax I LLC Docket 2017-2575 O’MALLEY, REYNA, HUGHES April 17, 2019 Brief summary: DC finding that “platelets in an amount of 100% by weight” can include “some residual dispersant” and its denial … Continue reading →

Posted in Anticipation (35 USC 102), Claim Construction, Conception and Reduction to Practice, Infringement | Leave a comment