Monthly Archives: January 2020

Board IPR obviousness conclusion affirmed (cannot “ignore the skilled artisan’s knowledge”)

Posted on January 31, 2020 by Patrick J. Halloran, Ph.D., J.D.

Koninklijke Philips N.V. v. Google, LLC, Microsoft Corp. et al. Docket No. 2019-1177 (IPR2017-00447) MOORE, O’MALLEY, STOLL January 30, 2020 Brief Summary: Board IPR obviousness determination regarding Phillips’s claims affirmed (e.g., § 311(b) limitation on prior art does not mean … Continue reading →

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

Galderma’s ivermectin claims not inherently anticipated since “claimed efficacy limitations” not disclosed by single prior art reference

Posted on January 30, 2020 by Patrick J. Halloran, Ph.D., J.D.

Galderma Labs., L.P. et al. v. Teva Pharmaceuticals, Inc. Docket No. 2019-2396, -1213 MOORE, O’MALLEY, STOLL January 29, 2020 Non-precedential Brief Summary: DC finding of inherent anticipation reversed as it relied on a second reference to provide limitations missing from … Continue reading →

Posted in Anticipation (35 USC 102), Generics / ANDA, Inherency | Leave a comment

Board denial of IPR dismissal request affirmed due to failure to produce evidence that Amazon should have been named a real party in interest on IPR petition

Posted on January 28, 2020 by Patrick J. Halloran, Ph.D., J.D.

Global Equity Management (GEMSA) v. Ebay Inc., Alibaba.com, Booking.com Docket No. 2019-1304, -1304 (IPR Nos. 2016-01828, -01829) WALLACH, CLEVENGER, STOLL January 14, 2020 Non-precedential Brief Summary: Board decision not to dismiss affirmed since “GEMSA did not meet its burden to … Continue reading →

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

DC obviousness and infringement decisions regarding coffee filter claims affirmed

Posted on January 22, 2020 by Patrick J. Halloran, Ph.D., J.D.

Eko Brands, LLC v. Adrian Rivera Maynez Ent., Inc. et al. (“ARM”) Docket No. 2018-2215, -2254 DYK, REYNA, HUGHES January 13, 2020 Brief Summary: DC decisions that ARM’s claims are invalid for obviousness and not infringed, and that ARM willfully … Continue reading →

Posted in Claim Construction, Infringement, Obviousness, Uncategorized, Willfullness | Leave a comment

DC grant of SJ affirmed since covenant not to sue and exclusive license directed to different subject matter and not covered by merger clause

Posted on January 16, 2020 by Patrick J. Halloran, Ph.D., J.D.

Molon Motor and Coil Corp. v. Nidec Motor Corp. Docket No. 2019-1071 LOURIE, REYNA, HUGHES January 10, 2020 Brief Summary: DC grant to SJ barring Molon since there was no merger of two agreements affirmed. Summary: Molon appealed DC grant … Continue reading →

Posted in Licensing, Uncategorized | Leave a comment

Genentech’s antibody purification claims correctly found anticipated or obviousness in IPR, Fed. Cir. decides

Posted on January 14, 2020 by Patrick J. Halloran, Ph.D., J.D.

Genentech, Inc. v. Hospira, Inc. (United States, Intervenor) Docket Nos. 2018-1933 (IPR2016-01837) PROST, NEWMAN, CHEN January 10, 2020 Brief Summary: Board’s IPR anticipation and obviousness findings affirmed. Summary: Genentech appealed PTAB (“Board”) IPR final written decision (FWD) finding certain claims … Continue reading →

Posted in Anticipation (35 USC 102), Inherency, Inter Parties Review (IPR), IPR, Obviousness, Obviousness (Secondary Considerations), Uncategorized | Leave a comment

“[R]esult that was inherent in the prior art” cannot overcome obviousness based on inherency

Posted on January 10, 2020 by Patrick J. Halloran, Ph.D., J.D.

Hospira, Inc. v. Fresenius Kabi USA, LLC Docket Nos. 2019-1329, -1367 NEWMAN, LOURIE, TARANTO January 9, 2020 Brief Summary: DC obviousness judgment of affirmed as “wherein” clause only describes “a result that was inherent in the prior art”. Summary: Hospira … Continue reading →

Posted in Inherency, Obviousness, Uncategorized | Leave a comment

Fed. Cir. reverses DC and finds Amneal’s Sensipar®-related product infringes Amgen ‘405 patent

Posted on January 8, 2020 by Patrick J. Halloran, Ph.D., J.D.

Amgen Inc. v. Amneal Pharm., Pirimal, et al., Zydus Pharm., Cadila et al. Docket Nos. 2018-2414, 2019-1086 NEWMAN, LOURIE, TARANTO January 7, 2020 Brief Summary: DC claim construction reversed (“composition comprising” not closed to other components); no infringement by Amneal … Continue reading →

Posted in Claim Construction, Generics / ANDA, Infringement | Leave a comment

IPR invalidity decision vacated and remanded due to erroneous claim construction

Posted on January 6, 2020 by Patrick J. Halloran, Ph.D., J.D.

SIPCO, LLC v. Emerson Electric Co. Docket Nos. 2018-1856 (IPR2016-01895) LOURIE, MOORE, TARANTO December 20, 2019 Non-precedential Brief Summary: IPR invalidity decision vacated and remanded due to erroneous claim construction (e.g., different claim terms “presume[d]” to “have different meanings”). Summary: … Continue reading →

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

Persion’s Zohydro ER claims invalid for obviousness and lack of written description (“inherently result in the claimed [PK] parameters”, functional limitations too broad)

Posted on January 2, 2020 by Patrick J. Halloran, Ph.D., J.D.

Persion Pharmaceuticals LLC v. Alvogen Malta Operations Ltd. Docket Nos. 2018-2361 O’MALLEY, REYNA, CHEN December 27, 2019 Brief Summary: DC findings of invalidity of Persion’s hepatic insufficiency claims related to Zohydro ER for obviousness and no WD affirmed. Summary: Persion … Continue reading →

Posted in Functional limitations, Inherency, Method claims, Obviousness, Obviousness (Secondary Considerations), Uncategorized, Written description | Leave a comment