Category Archives: IPR

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

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

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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

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-1265, -1267, -1270 IPRs 2017-00731, -01121, -02063, -00737, -01122, -01960 LOURIE, MOORE, WALLACH March 26, 2020 Non-Precedential Brief Summary: Board’s claim construction (e.g., “effective amount”), obviousness conclusion and denial of amendment … Continue reading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

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 Docket No. 2019-1021 LOURIE, MOORE, STOLL March 25, 2020 Non-Precedential Brief Summary: DC finding of infringement of certain claims affirmed as statements made in related IPR … Continue reading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

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

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

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

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

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

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

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