Category Archives: Priority

Board IPR anticipation and obviousness decisions affirmed; unconstitutionality of IPR arguments rejected (as in Celgene)

Enzo Life Sciences, Inc. v. Becton, Dickinson and Co. (Holozyme) Docket No. 2018-1232, -1233 (IPR2016-00820, -00822) LOURIE, O’MALLEY, CHEN August 16, 2019 (Non-Precedential) Brief Summary: Board decisions of invalidity of Enzo’s claims for anticipation and obviousness affirmed; arguments that retroactive … Continue reading

Posted in Anticipation (35 USC 102), Claim Construction, Inter Parties Review (IPR), IPR, Obviousness, Obviousness-Teaching Away, Priority, Uncategorized, Written description | Leave a comment

Concert Pharm., Inc. v. Incyte Corp.

Post-Grant Review PGR2017-00034 (U.S. Pat. No. 9,662,335 B2) Decision not to institute PGR January 11, 2019 Brief summary: Concert’s Petition to institute PGR of Incyte’s US 9,662,335 B2 regarding deuterated ruxolitinib was denied. Summary: Concert filed a Petition to institute … Continue reading

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Natural Alternatives Int., Inc. v. USPTO

Docket No. 2017-1962 PROST, MOORE, REYNA October 1, 2018 Brief summary: Board affirmance of examiners rejections affirmed as NAI was not entitled to an earlier priority date from a chain of applications because an intervening CIP disclaimed priority to the … Continue reading

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D Three Enterprises, LLC v. Sunmodo Corp. / Rillito River Solar LLC (EcoFasten)

Docket No. 2017-1909, -1910 REYNA, CLEVENGER, WALLACH May 21, 2018 Brief summary: DC decision of invalidity for lack of written description (WD) affirmed because, e.g., “adequate [WD] does not ask what is permissible, rather, it asks what is disclosed” (Ariad, … Continue reading

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Droplets, Inc. v. E*Trade Bank et al. v. USPTO (Intervenor)

Docket No. 2016-2504, -2602 (IPR2015-00470) DYK, O’MALLET, WALLACH April 19, 2018 Brief summary: PTAB IPR decision finding Droplets’ ‘115 Patent invalid for obviousness based on its decision that the patent improperly claimed priority to an earlier provisional application affirmed (requirement … Continue reading

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Hologic, Inc. v. Smith & Nephew, Inc., Covidien LP

Docket No. 2017-1389 NEWMAN, WALLACH, STOLL March 14, 2018 Brief summary: PTAB conclusion that S&N’s PCT application (“Emanuel PCT”) was not an invalidating obviousness reference against a related patent but instead “has sufficient written description to make it a priority … Continue reading

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Nintendo of America Inc. et al. v. iLife Technologies, Inc.

Docket Nos. 2016-2266 (IPR2015-00109) LOURIE, TARANTO, CHEN December 27, 2017 Non-precedential Brief summary: The FC panel affirmed the PTAB’s decision of reduction to practice before the prior art date for certain claims but reversed as to others (e.g., “prototype has … Continue reading

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