Category Archives: Inter Parties Review (IPR)

Public FDA hearing is a printed publication, Hulu IPR decision does not apply to examination

Posted on April 8, 2020 by

Ex parte Antonio J. Grillo-Lopez Appeal 2018-006082 (Appln. No. 13/524,837) Precedential (designated April 7, 2020) Brief Summary: Public FDA hearing held to be printed publication and “the framework set forth in the Hulu decision for IPR proceedings does not apply … Continue reading →

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

IPR claim construction of “effective amount” based on prosecution history and obviousness conclusions affirmed; no abuse of discretion in Board’s denial to amend after modifying institution decision

Posted on April 1, 2020 by

Genentech, Inc. v. Andrei Iancu (USPTO) Docket No. 2019-1263, -1265, -1267, -1270 IPRs 2017-00731, -01121, -02063, -00737, -01122, -01960 LOURIE, MOORE, WALLACH March 26, 2020 Non-Precedential Brief Summary: Board’s claim construction (e.g., “effective amount”), obviousness conclusion and denial of amendment … Continue reading →

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

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

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 Docket No. 2019-1021 LOURIE, MOORE, STOLL March 25, 2020 Non-Precedential Brief Summary: DC finding of infringement of certain claims affirmed as statements made in related IPR … Continue reading →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

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

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

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

Posted on March 9, 2020 by

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

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

Posted on March 2, 2020 by

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