Monthly Archives: September 2019

DC correctly denied preliminary injunction since Propel showed evidence of anticipation by parent patent application

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

OrthoAccel Techs., Inc. v. Propel Orthodontics, LLC, et al. Docket No. 2018-1534 (Non-precedential) PROST, REYNA, WALLACH September 23, 2019 Brief Summary: DC denial of a preliminary injunction affirmed since Propel presented sufficient evidence to shift the burden of persuasion to … Continue reading →

Posted in Anticipation (35 USC 102), Injunction, Priority, Uncategorized, Written description | Leave a comment

Covered Business Method (CBM) eligibility decision remanded under revised claim construction

Posted on September 26, 2019 by Patrick J. Halloran, Ph.D., J.D.

SIPCO, LLC v. Emerson Electric Co. Docket No. 2018-1635 (CBM2016-00095) O’MALLEY, REYNA, CHEN September 25, 2019 Brief Summary: PTAB determination of CBM eligibility reversed since, e.g., “SIPCO’s claims combine certain communication elements in a particular way to address a specific … Continue reading →

Posted in Claim Construction, Covered Business Method Reviews, Uncategorized | Leave a comment

DC decision affirmed as safety and efficacy “wherein” clauses are limiting

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

Allergan, Inc. et al. v. Sandoz, Inc., Alcon Laboratories Docket No. 2018-2207 PROST, NEWMAN, WALLACH August 29, 2019 Brief Summary: DC grant of a preliminary injunction to Allergan affirmed since the “wherein” clauses relating to safety and efficacy were found … Continue reading →

Posted in Claim Construction, Uncategorized, Wherein | Leave a comment

IPR nonobviousness decision affirmed in part because secondary evidence does not need to be “precisely limited to the point of novelty”

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

Henny Penny Corporation v. Frymaster LLC Docket No. 2018-1596 (IPR2016-01435) LOURIE, CHEN, STOLL September 12, 2019 Brief Summary: PTAB IPR holding of nonobviousness affirmed (no motivation to combine, secondary evidence does not need to be “precisely limited to the point … Continue reading →

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

Incomplete response to Final Office Action results in reduced Patent Term Adjustment

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

Intra-Cellular Therapies, Inc. v. Andrei Iancu (USPTO) Docket No. 2018-1849 WALLACH, CHEN, HUGHES September 18, 2019 Brief Summary: DC decision affirming USPTO’s PTA calculation penalizing IC for 21-day delay in filing proper response to FOA affirmed. Summary: Intra-Cellular (IC) appealed … Continue reading →

Posted in Patent Term Adjustment (PTA), Patent Term Extension, Uncategorized | Leave a comment

Pattern illustrated in design patent limited to chairs due to prosecution history

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

Curver Luxemborg, SARL v. Home Expressions, Inc. Docket No. 2018-2214 CHEN, HUGHES, STOLL September 12, 2019 Brief Summary: DC finding that Curver’s design patent claim limited the patent to chairs affirmed. Summary: Curver appealed DC grant of HE’s motion to … Continue reading →

Posted in Design Patents, Uncategorized | Leave a comment

“[P]ost-interference examination period” was RCE time “attributable to Mayo” that reduced time of patent term adjustment (PTA)

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

Mayo Foundation v. Andrei Iancu (USPTO) Docket No. 2018-2031 NEWMAN, LOURIE, DYK September 16, 2019 Brief Summary: DC determination that “post-interference examination period” was “was RCE time ‘attributable to Mayo, and not the PTO’” and reduced Mayo’s PTA time. Summary: … Continue reading →

Posted in Patent Term Adjustment (PTA), Patent Term Extension, Uncategorized | Leave a comment

DC grant of SJ of no induced infringement affirmed, exclusion of expert report proper since Phigenix did not “timely disclose its narrowed infringement theory”

Posted on September 12, 2019 by Patrick J. Halloran, Ph.D., J.D.

Phigenix, Inc. v. Genetech, Inc. Docket No. 2017-2617, 2018-1042 REYNA, BRYSON, STOLL September 5, 2019 Non-Precedential Brief Summary: DC grant of SJ of no induced infringement after exclusion of Phigenix’s expert report affirmed (e.g., “[w]ithout its expert report, Phigenix’s direct … Continue reading →

Posted in Inducement to Infringe, Infringement, Uncategorized | Leave a comment

DC grant of SJ to Genentech of no induced infringement affirmed, exclusion of expert report proper since Phigenix did not “timely disclose its narrowed infringement theory”

Posted on September 12, 2019 by Patrick J. Halloran, Ph.D., J.D.

Phigenix, Inc. v. Genetech, Inc. Docket No. 2017-2617, 2018-1042 REYNA, BRYSON, STOLL September 5, 2019 Non-Precedential Brief Summary: DC grant of SJ of no induced infringement after exclusion of Phigenix’s expert report affirmed (e.g., “[w]ithout its expert report, Phigenix’s direct … Continue reading →

Posted in Inducement to Infringe, Infringement, Uncategorized | Leave a comment

Board properly decided to deny institution and dismiss IPRs on SAS remand instead of instituting on all grounds

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

BioDelivery Sciences Int., Inc. v. Aquesitive Therapeutics, Inc., FKA Monsol Rx, LLC Docket No. 2019-1643-45 (IPR2015-00165, -00168, -00169) NEWMAN (D), LOURIE, REYNA (Order) August 26, 2019 Brief Summary: On remand under SAS after instituting IPRs on less than all the … Continue reading →

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