Tag Archives: PTAB

PTAB Grants Discovery to Underlying Test Data

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

Availability of Reissue After an Invalidity Determination

A recent law review article discusses reissue as a potential cure for patentees who have had their claims invalidated by a court or the Patent Trial and Appeals Board (PTAB).[1] Under 35 U.S.C. § 251, reissue is available when “any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective … Continue Reading

Requirements of § 121’s Safe Harbor: Ensuring That Divisional Applications Will Be Protected Against OTDP Rejections

In a recent decision, the Patent Trial and Appeal Board (PTAB) narrowly construed the so-called safe harbor provision of 35 U.S.C. § 121, affirming the examiner’s rejection of a patent application under the doctrine of “obviousness-type double patenting” (OTDP). Ex parte Sauerberg, Appeal 2015-007064 2017 WL 150016 *1 (PTAB Jan. 10, 2017). The safe harbor protects … Continue Reading

Federal Circuit looks to provisional patent application in determining claim scope

Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ Tech v. Ricoh.[1] In MPHJ Tech, the Federal Circuit affirmed an inter partes review decision in which the Patent and Trademark Appeal Board (PTAB) found claims of … Continue Reading

When Obvious Isn’t Obvious: Personal Web Technologies

On Valentine’s Day 2017, the Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeal Board’s conclusions of obviousness in Personal Web Technologies, LLC due to insufficient analysis in the board’s decision. Judge Taranto, joined by Judge Chen and Judge Stoll, explicitly asserted the court’s role in enforcing the principles of administrative … Continue Reading

Licensees Stymied by Sovereign Immunity Both in Federal Court and at PTAB

  Licensees Covidien LP, Medtronic PLC, and Medtronic, Inc., failed to obtain any relief, at least so far, in federal court or at the Patent Trial and Appeal Board (PTAB) because of parallel holdings that patent owner University of Florida Research Foundation, Inc. (UFRF), is entitled to Eleventh Amendment immunity. University of Florida Research Foundation, … Continue Reading

Post Grant Review: § 112 and Eligibility Issues in Chemical and Life Sciences

Post Grant Review (PGR) petitions are on the rise, and nearly half of all petitions to date have challenged patents in Biotechnology and Organic Chemistry, or Chemical and Materials Engineering technology centers.[1] We have reviewed PGR petitions filed against patents in these technology categories.[2] One final written decision issued on Nov. 14, 2016,[3] and more … Continue Reading

First Post-Grant Review Written Opinions from PTAB Invalidate Two Patents for Livestock Valuation

The Patent Trial and Appeal Board (PTAB) issued its first written opinions based on a trial of the relatively new Post-Grant Review (PGR) proceeeding and genetic factors. American Simmental Association (ASA) brought the petitions for review of the Leachman patents in response to a lawsuit filed by Leachman. ASA is an organization formed in 1968 … Continue Reading

Amended PTAB Rules to Take Effect on May 2, 2016

On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board (“PTAB”), including inter partes review (“IPR”), post-grant review (“PGR”), and covered business methods (“CBM”), will take effect. The rules apply to all currently pending and future proceedings before the PTAB. The primary amendments are: Testimonial Evidence Permitted in Patent … Continue Reading
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