Monthly Archives: March 2020

Rejected claim construction proposal during IPR was not prosecution history estoppel, FC affirms infringement under DOE; second infringement decision reversed

Posted on March 27, 2020 by Patrick J. Halloran, Ph.D., J.D.

Galderma Labs., Nestle Skin Health S.A. et al. v. Amneal Pharm. LLC et al. Docket No. 2019-1021 LOURIE, MOORE, STOLL March 25, 2020 Non-Precedential Brief Summary: DC finding of infringement of certain claims affirmed as statements made in related IPR … Continue reading →

Posted in Claim Construction, Doctrine of equivalents, Infringement, Inter Parties Review (IPR), IPR, Prosecution History Estoppel, Uncategorized | Leave a comment

FB improperly joined to its existing IPRs under 315(c); various obviousness conclusions affirmed and vacated

Posted on March 25, 2020 by Patrick J. Halloran, Ph.D., J.D.

Facebook, Inc. v. Windy City Innovations, LLC Docket No. 2018-1400-3, -1537, -1540-41 (IPR2016-00=1156-59, IPR2017-00659, -00709 PROST, PLAGER, O’MALLEY March 18, 2020 Brief Summary: Board improperly joined FB as a party to its own existing IPRs under section 315(c); various obviousness … Continue reading →

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

IPR decision of obviousness of method of treatment claim reversed for erroneous claim construction

Posted on March 23, 2020 by Patrick J. Halloran, Ph.D., J.D.

Kaken Pharm. Co., Inc., Bausch Health Cos. Inc. v. USPTO Docket No. 2018-2232 (IPR2017-00190, -01429) NEWMAN, O’MALLEY, TARANTO March 13, 2020 Brief Summary: IPR obviousness decision reversed based on erroneous claim construction in method of treatment claim. Summary: Kaken appealed … Continue reading →

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

DC patent ineligibility holding for Illumina’s fetal DNA-related claims reversed

Posted on March 20, 2020 by Patrick J. Halloran, Ph.D., J.D.

Illumina, Inc., Sequenom, Inc. v. Ariosa Diagnostics, Inc. et al. Docket No. 2019-1419 LOURIE, MOORE, REYNA March 17, 2020 Brief Summary: DC finding that Illumina’s fetal DNA-related claims are patent ineligible reversed. Summary: Illumina appealed DC decision finding certain claims … Continue reading →

Posted in Patent Eligibility (101), Patentability, Uncategorized | Leave a comment

Chloroquine and COVID, a real possibility?

Posted on March 17, 2020 by Patrick J. Halloran, Ph.D., J.D.

Interesting research: 1) An Effective Treatment for Coronavirus (Todaro and Rigano) https://docs.google.com/document/d/e/2PACX-1vTi-g18ftNZUMRAj2SwRPodtscFio7bJ7GdNgbJAGbdfF67WuRJB3ZsidgpidB2eocFHAVjIL-7deJ7/pub#ftnt6 2) Expert Consensus on Chloroquine Phosphate for the Treatment of Novel Coronavirus Pneumonia (Zhonghua, et al.) https://pubmed.ncbi.nlm.nih.gov/32164085/?fbclid=IwAR0ZNk2JXMGYCDLKHwB5kykkLUviE03JqNRWGH8P8lt1NRKVJLk6cOIfjv8 3) In Vitro Antiviral Activity and Projection of Optimized Dosing Design … Continue reading →

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Method of treatment claims eligible under 101 (DC reversed); DC obviousness findings affirmed

Posted on March 17, 2020 by Patrick J. Halloran, Ph.D., J.D.

Boehringer Ingelheim Pharm. et al. v. Mylan Pharmaceuticals Inc. Docket No. 2019-1172 DYK, MOORE, HUGHES March 16, 2020 Non-precedential Brief Summary: DC decision of ineligibility under 101 for method of treatment claims reversed; invalidity for double-patenting and obviousness affirmed. Summary: … Continue reading →

Posted in Double Patenting, Obviousness, Patentability, Uncategorized | Leave a comment

Board CBM decisions of patent ineligibility affirmed (no improved computer functionality)

Posted on March 11, 2020 by Patrick J. Halloran, Ph.D., J.D.

Customedia Technologies, LLC v. Dish Network Corp. et al. Docket No. 2018-2239 (CBM2017-00023), 2019-1000 (CBM2017-00032) PROST, DYK, MOORE March 6, 2020 Brief Summary: PTAB CBM decisions of patent ineligibility under 101 affirmed (e.g., “computers are invoked merely as a tool”, … Continue reading →

Posted in Patent Eligibility (101), Software | Leave a comment

Board IPR decision of no obviousness reversed as claim construction excluded preferred embodiment

Posted on March 9, 2020 by Patrick J. Halloran, Ph.D., J.D.

Uber Technologies, Inc. v. X One, Inc. Docket No. 2019-1165 (IPR2017-01264) PROST, DYK, WALLACH March 3, 2020 Non-precedential Brief Summary: Board IPR decision of no obviousness of certain mapping-related claims reversed as claim construction would exclude the preferred embodiment; obviousness … Continue reading →

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

Failure to disclose pre-critical date offer for sale was inequitable conduct, DC decision affirmed

Posted on March 4, 2020 by Patrick J. Halloran, Ph.D., J.D.

GS Cleantech, Cantor Colburn LLP v. Adkins Energy LLC, Big River Resources et al. Docket No. 2016-2231, -1838, 2017-1832 REYNA, WALLACH, HUGHES March 2, 2020 Brief Summary: DC finding of inequitable conduct for failure to disclose pre-critical date offer for … Continue reading →

Posted in Inequitable Conduct, On-Sale Bar, Uncategorized | Leave a comment

Acoustic’s IPR time-bar arguments waived; anticipation and obviousness findings affirmed

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

Acoustic Technology, Inc. v. Itron Networked Solutions, Inc. Docket No. 2019-1061 (IPR2017-1061) (see also FC Docket Nos. 2019-1059, -1060) MOORE, REYNA, TARANTO February 13, 2020 Brief Summary: Appeal based on time-bar arguments not presented to the Board were waived; anticipation … Continue reading →

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