Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir. August 29, 2019)

On motion, the Federal Circuit dismissed the second appeals in three IPRs pertaining to oral films used for the delivery of active components.  The PTAB initially instituted the three IPRs, but not on all the grounds contained in the petitions.  In total, there were seventeen grounds in the petitions, and the PTAB instituted on only three.

Continue Reading IPR Institution Is Not Permanent, and Is Nonappealable

GoPro, Inc. v. 360Heros, Inc., IPR2018-01754 (Precedential Opinion Panel, August 23, 2019)

Section 315(b) of Title 35 prohibits institution of an IPR where the petition is filed more than one year after service of a complaint alleging patent infringement.

In GoPro v. 360Heros, the Precedential Opinion Panel (POP) considered a situation where GoPro petitioned for an IPR more than one year after 360Heros filed a counterclaim alleging patent infringement.  Before the district court, GoPro successfully challenged 360Heros’ standing to sue on the basis that 360Heros had not been formally assigned title to the asserted patent by the inventor at the time of filing its counterclaim.  Subsequently, 360Heros did receive an assignment.

GoPro filed its petition more than one year after 360Heros’ counterclaim was served.  360Heros sought to have the IPR barred for failure to comply with 35 USC 315(b), which states:
Continue Reading A Party Who Lacks Standing Can Still Trigger the Section 315(b) Time Bar

MTD Products Inc. v. Iancu, Appeal No. 2017-2292 (Fed. Cir. August 12, 2019)

MTD had a patent for steering and driving systems for zero turn radius vehicles, such as lawn mowers.  The patent was challenged in IPR, where the Board had to construe the claim term “mechanical control assembly … configured to” perform a function.  The Board construed the term as not being governed by 35 U.S.C. §112, ¶6, and held the claims to be obvious.

Continue Reading Federal Circuit Vacates a Board Decision for Failure to Construe a Term as a Means Plus Function Limitation

Celgene Corp. v. Peter, Appeal Nos. 2018-1167, -1168, -1169 (Fed. Cir. July 30, 2019)

Celgene owned two patents that pertained to methods of safely distributing potentially hazardous drugs.  The patents were challenged in an inter partes review (IPR) as obvious over the prior art.  The Board determined that the patents were obvious.

Continue Reading Inter Partes Review of Pre-AIA Patents is Constitutional

Cited Statutory Sections: 101 and 103

This appeal concerned 10 inter partes reviews (IPRs) filed by petitioners Neptune Generics, Fresenius Kabi USA and Mylan Laboratories against all of the claims of U.S. Patent No. 7,772,209, which is owned by Eli Lilly & Co. The ’209 patent concerns methods of administering pemetrexed disodium, an antifolate chemotherapeutic agent, in combination with folic acid and a methylmalonic acid (MMA) lowering agent, such as vitamin B12. The co-administration of the folic acid and the MMA lowering agent was represented as reducing the toxicity of the antifolate chemotherapy.

Continue Reading Neptune Generics, LLC v. Eli Lilly & Co., No. 2018-1257 (Fed. Cir. Apr. 26, 2019).

In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. In contrast, in a post grant review (PGR) proceeding, a challenger can rely on any ground related to patentability, including prior sale, to challenge a patent claim.  In particular, 35 U.S.C. §102(a)(1) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.”
Continue Reading Supreme Court Holds That AIA On-Sale Bar Applied to Secret Sales

A number of significant changes occurred in 2018 at the U.S. Patent and Trademark Office (USPTO). To begin with, in February 2018, a new USPTO Director took office.  Director Andrew Iancu, a former patent litigator with law firm experience, appears to have brought a different perspective than that of his corporate predecessors – Michel Lee (Google) and David Kappos (IBM) – to the job at the helm of the USPTO.  In his Senate confirmation hearings, Iancu made it clear that he felt that better balance was needed in the administrative review of issued patents by the USPTO under the America Invents Act (AIA).   He pledged to assess “improvements in the AIA trial standards and processes.”  Iancu identified “institution decisions, claim construction, the amendment process, and the conduct of hearings” as areas that warranted study.  In fact, Director Iancu did a lot more than study these aspects of practice before the Patent Trial and Appeal Board (PTAB) in 2018.
Continue Reading Year in Review: Changes in PTAB Practice in 2018

In a final rule published in the Federal Register on October 11, 2018, the U.S. Patent and Trademark Office (USPTO) took a remarkable step of acknowledging unfairness in the way its Patent Trial and Appeal Board (PTAB) has been conducting trials for the past six years. The rule change will apply to all of the

On May 23, 2018, in XY, LLC v. Trans Ova Genetics, L.C., CAFC held that its affirmance of PTAB’s invalidity decision regarding certain claims of a patent owned by XY in a separate appeal involving a different defendant must be given “immediate issue preclusive effect” with respect to the same claims in the present