Category Archives: Obviousness

Non-obviousness finding for Relistor® OB-listed formulation patent reversed due to structural and functional similarity to prior art compounds

Valeant Pharm. Int., Salix Pharm., Inc. et al. v. Mylan Pharm. Inc., et al., Actavis LLC Docket No. 2018-2097 LOURIE, REYNA, HUGHES April 8, 2020 Brief Summary: DC grant of SJ of non-obviousness of OB formulation patent reversed and remanded … Continue reading

Posted in Generics / ANDA, Obviousness, Obviousness (Secondary Considerations), Obviousness-Teaching Away, Summary Judgment | 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

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-1265, -1267, -1270 IPRs 2017-00731, -01121, -02063, -00737, -01122, -01960 LOURIE, MOORE, WALLACH March 26, 2020 Non-Precedential Brief Summary: Board’s claim construction (e.g., “effective amount”), obviousness conclusion and denial of amendment … Continue reading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

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

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

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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Method of treatment claims eligible under 101 (DC reversed); DC obviousness findings affirmed

Boehringer Ingelheim Pharm. et al. v. Mylan Pharmaceuticals Inc. Docket No. 2019-1172 DYK, MOORE, HUGHES March 16, 2020 Non-precedential Brief Summary: DC decision of ineligibility under 101 for method of treatment claims reversed; invalidity for double-patenting and obviousness affirmed. Summary: … Continue reading

Posted in Double Patenting, Obviousness, Patentability, Uncategorized | Leave a comment

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