Author Archives: Patrick J. Halloran, Ph.D., J.D.

Board reexamination decision vacated and remanded for reconsideration of its analogous art analysis (“reasonably pertinent”)

Airbus S.A.S. v. Firepass Corporation Docket Nos. 2019-1803 LOURIE, MOORE, STOLL November 8, 2019 Brief Summary: Board reexamination decision vacated and remanded for reconsideration of its analogous art determination (i.e., “whether the reference…is reasonably pertinent”). Summary: Airbus appealed Board reversal … Continue reading

Posted in Analgous Art, Reexamination, Uncategorized | Leave a comment

Board construction of “wherein” clause affirmed; remanded for review of non-instituted grounds

Alere, Inc. v. Rembrandt Diagnostics, LP Docket Nos. 2018-1812 (IPR2016-01502) NEWMAN, DYK, REYNA October 29, 2019 Non-Precedential Brief Summary: Board’s claim construction of the “wherein” clause affirmed; decision remanded for consideration of non-instituted grounds. Summary: Alere appealed Board IPR final … Continue reading

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

Fed. Cir. finds APJ’s overseeing IPRs to be unconstitutionally appointed, but suggests remedy

Arthrex, Inc. v. Smith & Nephew (USPTO as Intervenor) Docket Nos. 2018-2140 (IPR2017-00275) MOORE, REYNA, CHEN October 31, 2019 Brief Summary: Board IPR FWD vacated and remanded as APJs are “principal officers” that must be appointed by the President (as … Continue reading

Posted in Appeal, Covered Business Method Reviews, Inter Parties Review (IPR), IPR, Uncategorized | Leave a comment

Board PGR obviousness decision vacated for disregarding evidence of copying as irrelevant

Liqwd, Inc. v. L’Oreal USA, Inc. Docket Nos. 2018-2152 (PGR2017-00012) REYNA, HUGHES, STOLL October 30, 2019 Brief Summary: Board PGR obviousness decision vacated for error in disregarding evidence of copying as irrelevant. Summary: Liqwd appealed Board post-grant review (PGR) decision … Continue reading

Posted in Anticipation (35 USC 102), Obviousness, Post-grant review, Uncategorized | Leave a comment

HCV method of treatment claims invalid for lack of enablement and written description

Idenix Pharmaceuticals LLC et al. v. Gilead Sciences Inc. Docket Nos. 2018-1691 PROST, NEWMAN, WALLACH October 30, 2019 Brief Summary: DC grant of JMOL to Gilead finding HCV treatment patent invalid for enabled affirmed; FC panel also finds lack of … Continue reading

Posted in Claim Construction, Enablement, Uncategorized, Written description | Leave a comment

Board decision finding Google did not show anticipation or obviousness affirmed

Google LLC v. Kininklijke Philips, N.V. Docket Nos. 2018-2213 (IPR2017-00437) Moore, Bryson, Chen October 23, 2019 Non-precedential Brief Summary: Board IPR decision that Google did not show the challenged claims to be anticipated or obvious affirmed. Summary: Google appealed Board … Continue reading

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

PTAB denies institution of IPR against PureCircle’s steviol process claims

Sweegen, Inv. v. PureCircle USA Inc., et al. IPR2019-01017 (US 9,243,273B2) October 24, 2019 Decision not to institute IPR Brief Summary: Petition for IPR denied as PTAB determined Sweegen did not present a reasonable likelihood of prevailing on obviousness or … Continue reading

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