Since the inception of inter partes reviews (IPRs) and post grant reviews (PGRs) under the America Invents Act, the option for a patent owner to file a motion to amend its claims was always present, but motions to amend were...more
When the PTAB renders a decision, one of the parties is almost certain to be unhappy. Providing appropriate advice in the face of an undesired outcome requires an understanding of the odds of changing the outcome. This...more
The recent decisions of the USPTO Patent Trial and Appeal Board (PTAB) granting Celgene’s requests for rehearing in parallel Inter Partes Review proceedings brought by Kyle Bass’s Coalition for Affordable Drugs (CFAD) are...more
9/21/2017
/ Burden of Proof ,
Burden-Shifting ,
Concurrent Litigation ,
Inter Partes Review (IPR) Proceeding ,
Kyle Bass ,
Parallel Claims ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Pharmaceutical Patents ,
USPTO
The USPTO Patent Trial and Appeals Board (PTAB) declined to institute Inter Partes Review (IPR) proceedings against three Biogen Idec TYSABRI patents. The IPR petitions were filed by Swiss Pharma International, and asserted...more
The USPTO Patent Trial and Appeal Board (PTAB) has issued a final written decision upholding Shire’s Lialda® patent over the Inter Partes Review (IPR) challenge brought by Kyle Bass and his Coalition for Affordable Drugs. The...more
Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one....more
6/1/2016
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Corporate Counsel ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Owner Preliminary Response ,
Patent Portfolios ,
Patent Trial and Appeal Board ,
Reissue Patents ,
Request for Continued Examination ,
USPTO
On January 13, 2016, the Federal Circuit affirmed the decision of the PTAB in Ethicon Endo-Surgery, Inc. v. Covidien LP, IPR2013-00209, that all of the claims of U.S. Patent 8,317,070 are obvious. While the obviousness...more
On August 19th, the USPTO released a new set of proposed rules related to post-grant proceedings before the Patent Trial and Appeal Board (PTAB). Among the many offered rules was the addition of a “Rule 11-type certification”...more
8/24/2015
/ Abuse of Process ,
America Invents Act ,
Generic Drugs ,
Hedge Funds ,
Inter Partes Review (IPR) Proceeding ,
Motion for Sanctions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Post-Grant Review ,
Rule 11 ,
USPTO