David Farsiou

PTAB Denies Institution Despite Petitioner Demonstrating Reasonable Likelihood of Prevailing With Respect to at Least One Claim

By David Farsiou on November 12, 2018 Posted in Patent

In SAS Institute v. Iancu, 138 S. Ct. 1348, 1351 (2018), the Supreme Court held that when the Patent Trial and Appeal Board (the Board) institutes an inter partes review, it must decide the patentability of all the claims the petitioner challenged. The Court found that 35 U.S.C. §314(a)’s requirement that the Board find “a … Continue Reading

USPTO Memo Addresses Eligibility of Method-of-Treatment Claims in View of Federal Circuit Decision

By David Farsiou on June 18, 2018 Posted in Federal Circuit

In a memorandum dated June 7, 2018 (Memo), the U.S. Patent and Trademark Office (USPTO) set out new guidance concerning method-of-treatment claims, which should be welcome news for patentees. The memo addressed the decision by the U.S. Court of Appeals for the Federal Circuit in Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals, 887 F.3d 1117 (Fed. … Continue Reading

Additional Discovery of Clinical Trial Data in Inter Partes Review

By Timothy Doyle and David Farsiou on March 30, 2018 Posted in Patent

In Apotex, Inc. et al. v. Novartis AG (IPR 2017-00854, paper 47 dated Feb. 5, 2018), petitioner Apotex sought, and was granted, discovery of a Phase III clinical trial protocol from patent owner Novartis. The patent at issue in the IPR, U.S. 9,187,405, claims a method for treating relapses in relapsing-remitting multiple sclerosis by orally … Continue Reading

Strategic Use of a Reissue Application in the Context of an Inter Partes Review (IPR) Proceeding

By David Farsiou on January 2, 2018 Posted in Patent

In Legend3D, Inc. (Petitioner) v. Prime Focus Creative Services Canada Inc. (Patent Owner), Case IPR2016-00806, the Patent Trial and Appeal Board (Board) lifted a stay of a pending reissue application following a Final Written Decision, thereby allowing the Patent Owner another opportunity to pursue amended claims. Although the Federal Circuit recently determined that the PTAB … Continue Reading

Federal Circuit Splits on Approach to Analyzing Graham Factors

By Wade Haaland, Allen Sokal and David Farsiou on November 6, 2017 Posted in Patent

In Merck Sharp & Dohme Corp. v. Hospira, Inc.,[1] the Federal Circuit affirmed the lower court’s ruling that the asserted claims of Merck’s U.S. Patent No. 6,486,150 (the ’150 patent) were obvious despite evidence of commercial success and copying by others. Concerned that the majority’s opinion constituted a shortcut around a proper Graham analysis, Judge … Continue Reading

A Cautionary Tale: IPR Petition Denied Based on Third-Party Submission

By David Farsiou on August 30, 2017 Posted in Patent

In Cultec, Inc. v. StormTech LLC, IPR2017-00777, Paper 7 (Aug. 22, 2017), the Patent Trial and Appeal Board (Board) denied an inter partes review because the same or substantially the same prior art or arguments were said to have been previously presented to the Patent Office during ex parte prosecution of the challenged patent by … Continue Reading

PTAB Grants Discovery to Underlying Test Data

By David Farsiou on June 19, 2017 Posted in Patent

Discovery in inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) is typically quite limited, and the PTAB normally is reluctant to grant motions for additional discovery. It is instructive, therefore, when the PTAB does so. In a recent order in Mylan Pharmaceuticals Inc. v. Allegan, Inc., IPR2016-01127, Paper 28 (PTAB … Continue Reading