Category Archives: Inter Parties Review (IPR)

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

Posted on November 6, 2019 by

Alere, Inc. v. Rembrandt Diagnostics, LP Docket Nos. 2018-1812 (IPR2016-01502) NEWMAN, DYK, REYNA October 29, 2019 Non-Precedential Brief Summary: Board’s claim construction of the “wherein” clause affirmed; decision remanded for consideration of non-instituted grounds.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

Posted on November 4, 2019 by

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 decision finding Google did not show anticipation or obviousness affirmed

Posted on October 29, 2019 by

Google LLC v. Kininklijke Philips, N.V. Docket Nos. 2018-2213 (IPR2017-00437) Moore, Bryson, Chen October 23, 2019 Non-precedential Brief Summary: Board IPR decision that Google did not show the challenged claims to be anticipated or obvious affirmed.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

Posted on October 25, 2019 by

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

PTAB obviousness decision vacated as being improperly based on inherency

Posted on October 16, 2019 by

Knauf Insulation, Inc. et al. v. Rockwool International A/S Docket No. 2018-1810-11, -1891 DYK, LINN, TARANTO October 15, 2019 Non-precedential Brief Summary: PTAB inter partes reexamination obviousness determination vacated as being based on inherency. Summary: Knauf appealed PTAB’s inter partes … Continue reading →

Posted in Article III disputes, Inter Parties Review (IPR), Obviousness, Reexamination, Uncategorized | Leave a comment

PTAB IPR decision finding OSI’s Tarceva® patent obvious reversed (e.g., “unpredictability in cancer treatment generally”, reasonable expectation of success only with hindsight)

Posted on October 7, 2019 by

OSI Pharmaceuticals, LLC v. Apotex Inc. et al. Docket No. 2018-1925 (IPR2016-01284) NEWMAN, TARANTO, STOLL October 4, 2019 Brief Summary: PTAB’s IPR decision holding OSI’s OB ‘221 patent obvious reversed (e.g., the PTAB “misinterpreted the asserted references”, “NSCLC treatment was … Continue reading →

Posted in Claim Construction, Generics / ANDA, Inter Parties Review (IPR), IPR, Method claims, Obviousness, Uncategorized | Leave a comment

IPR nonobviousness decision affirmed in part because secondary evidence does not need to be “precisely limited to the point of novelty”

Posted on September 23, 2019 by

Henny Penny Corporation v. Frymaster LLC Docket No. 2018-1596 (IPR2016-01435) LOURIE, CHEN, STOLL September 12, 2019 Brief Summary: PTAB IPR holding of nonobviousness affirmed (no motivation to combine, secondary evidence does not need to be “precisely limited to the point … Continue reading →

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