Category Archives: America Invents Act

DC claim construction affirmed; refusal to correct inventorship vacated/remanded (“AIA did not narrow the meaning of ‘error’”)

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

Egenera, Inc. v. Cisco Systems, Inc. Docket No. 2019-2015, -2387 PROST, REYNA, STOLL August 28, 2020 Brief Summary: DC claim construction affirmed; refusal to allow Egenera to correct inventorship vacated/remanded (“AIA did not narrow the meaning of ‘error’”). Summary: Egenera … Continue reading →

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Andersen Corporation v. GED Integrated Solutions, Inc.

Posted on April 25, 2019 by Patrick J. Halloran, Ph.D., J.D.

Derivation Proceeding DER2017-00007 Petitioner Appln. No. 15/058,862; Respondent Pat. No. 9,428,953 B2 Final Written Decision (March 20, 2019) Brief summary: In this AIA derivation proceeding, the PTAB found that “Andersen has not demonstrated’ derivation “by a preponderance of the evidence”. … Continue reading →

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Supernus Pharm., Inc. et al. v. Andrei Iancu (USPTO)

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

Docket No. 2017-1357 DYK, SCHALL, REYNA January 23, 2019 Brief summary: DC grant of SJ to the USPTO regarding calculation of the PTA for Supernus’s patent reversed and remanded since Supernus could not have engaged in “reasonable efforts” to disclose … Continue reading →

Posted in America Invents Act, Patent Term Adjustment (PTA), Patent Term Extension | Leave a comment

Actelion Pharmaceuticals, Ltd. v. Joseph Matal (USPTO)

Posted on February 12, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2017-1238 LOURIE, O’MALLEY, WALLACH February 6, 2018 Brief summary: DC grant of SJ to the PTO that it correctly calculated the § 1.54 patent term adjustment “A delay” since Actelion did not expressly request to begin national examination … Continue reading →

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Wi-Fi One, LLC v. Broadcom Corp. / USPTO (Intervenor)

Posted on January 9, 2018 by Patrick J. Halloran, Ph.D., J.D.

Docket Nos. 2015-1944-46 (IPR2013-00601, -00602, 00636) En banc decision January 5, 2018 Brief summary: En banc FC found “no clear and convincing indication of Congress’s intent to bar judicial review of § 315(b) time-bar determinations” made by the PTO (unlike … Continue reading →

Posted in America Invents Act, Appeal, Inter Parties Review (IPR), IPR | Leave a comment

Silver Peak Systems, Inc. v. Joseph Matal (USPTO)

Posted on October 26, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2-15-2072 (IPR2014-00245) PROST, BRYSON, WALLACH October 24, 2017 Non-precedential Brief summary: PTAB denial of SP’s Motion to Amend because SP did not show the proposed new claims “recite patent-eligible subject matter under 35 U.S.C. § 101″ vacated and … Continue reading →

Posted in America Invents Act, Inter Parties Review (IPR), IPR, Procedural Issues | Leave a comment

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc. et al.

Posted on May 2, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2016-1284, -1787 DYK, MAYER, O’MALLEY May 1, 2017 Brief Summary: FC panel reversed DC and found the asserted claims invalid under the § 102(b) on-sale bar. The FC panel concluded that the AIA did not change the meaning … Continue reading →

Posted in America Invents Act, Anticipation (35 USC 102), Generics / ANDA, On-Sale Bar | Leave a comment

Synopsys, Inc. v. Mentor Graphics Corp. v. USPTO (Intervenor)

Posted on January 17, 2017 by Patrick J. Halloran, Ph.D., J.D.

Docket No. 2014-1516. -1530 (IPR2012-00042) CHEN, MAYER, STOLL February 10, 2016 Brief Summary: Board decision after IPR affirmed and FC finds “the Board need only issue a final written decision with respect to claims on which [IPR] has been initiated”. … Continue reading →

Posted in America Invents Act, Anticipation (35 USC 102), Appeal, Inter Parties Review (IPR), IPR | Leave a comment

Posted on January 9, 2017 by Patrick J. Halloran, Ph.D., J.D.

  The USPTO released statistics on AIA petitions (11/30/16) which are available here: Click to access aia_statistics_november2016.pdf The PTO data includes Covered Business Method (CBM) and Post-Grant Reviews (PGRs) but the Inter Partes Review (IPR) is by far the most-used … Continue reading →

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Cuozzo Speed Technologies, LLC v. Lee (USPTO)

Posted on June 24, 2016 by Patrick J. Halloran, Ph.D., J.D.

No. 14-446 U.S. Supreme Court (SCOTUS (Justice Breyer)) June 20, 2016 Brief Summary: PTO decision whether or not to institute IPR is non-appealable under §314(d) and PTO’s use of broadest reasonable claim construction standard in IPR is proper. Summary: This … Continue reading →

Posted in America Invents Act, Claim Construction, Inter Parties Review (IPR), IPR | Leave a comment