News & Analysis as of

Life Sciences Inter Partes Review (IPR) Proceeding America Invents Act

MoFo Life Sciences

Federal Court Invalidates Dosing Patent Based On Clinical Trials Disclosure

MoFo Life Sciences on

As an essential component of the drug development process, human clinical trials assist in determining whether a given drug will serve its intended purpose, but patent applicants should consider disclosure of such trials in...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends: Case Studies and Trends at the PTAB Involving 35 U.S.C. § 112

Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Silicon Valley Challenges the PTAB’s NHK-Fintiv Rule: Can IPRs Be Denied Based on Non-Statutory Factors?

Last week, four major technology companies – Apple, Cisco, Google, and Intel – brought suit against the United States Patent and Trademark Office (“USPTO”), challenging its authority to reject petitions for inter...more

Kramer Levin Naftalis & Frankel LLP

In Two Life Sciences Cases, the Supreme Court Declines to Address the Constitutionality of IPRs of Pre-AIA Patents

Last week, the U.S. Supreme Court declined to review the constitutionality of inter partes review proceedings (IPRs) challenging patents issued before the Leahy-Smith America Invents Act (AIA). ...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Takes Pass on Considering IPR Constitutionality

There is little rhyme nor reason in the cases the Supreme Court decides to review. But the Court has patterns in its case selection that do (to some degree) probe what the Justices think are important questions. One pattern...more

McDonnell Boehnen Hulbert & Berghoff LLP

Enzo Life Sciences, Inc. v. Becton, Dickinson and Co. (Fed. Cir. 2019)

Last week, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) finding claims of U.S. Patent No. 7,064,197 to be invalid for anticipation or obviousness, in Enzo Life Sciences, Inc. v. Becton,...more

Knobbe Martens

Patent Law Update for Medical Device Companies 2018 (Presentation)

Knobbe Martens on

Knobbe Martens Partners Paul Conover, Irfan Lateef, and Curtis Huffmire presented "Patent Law Update for Medical Device Companies 2018" at the MedTech Innovation Summit in San Francisco, CA on November 28, 2018. This session...more

Troutman Pepper

Attorney General’s Office May Weigh In on Constitutionality of IPRs involving Pre-AIA Patents

Troutman Pepper on

The 2011 America Invents Act (AIA) provided a variety of new ways to administratively challenge patents, including the now widely used inter partes review (“IPR”) procedure. In two recent appeals of IPR decisions, Genentech...more

McDermott Will & Emery

Petitioner Beware – Claim Construction Choice Can Make or Break Your Case

Addressing the requirements to institute an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) denied a petition because it failed to map the challenged claims to the asserted prior art using the claim...more

McDermott Will & Emery

PTAB Discretion, Petitions Reliant on Prior Art Cited During Prosecution

McDermott Will & Emery on

In three recent cases, the Patent Trial and Appeal Board (PTAB) addressed arguments pertaining to when and how it should exercise its discretion to deny some or all grounds for unpatentability in an inter partes review (IPR)...more

Kramer Levin Naftalis & Frankel LLP

Potential Impact of the Supreme Court’s Decision to Review the PTAB’s Practice of Issuing Partial Final Written Decisions in...

In a case with potential wide-ranging ramifications for patent validity challenges, on May 22, 2017, the Supreme Court granted a writ of certiorari in an appeal from an inter partes review (“IPR”) decision, SAS Institute v....more

Knobbe Martens

Freedom to Operate and the Use of AIA Review

Knobbe Martens on

Freedom to Operate: •Identifying infringement risk •Third party patent (infringement) – claim searching –Timing •Discrete, continuous –Searching •In-house, search agency –Screening/analyzing •Ranking...more

Sheppard Mullin Richter & Hampton LLP

Post-Grant Review Roils Patent Litigation Waters

The America Invents Act (AIA) has had a profound impact on patent litigation, particularly surrounding inter partes and other post-grant proceedings. Below, Manish K. Mehta, who handles patent litigation across an array of...more

Troutman Pepper

Post-Grant Challenges in Life Sciences: A Midyear Assessment

Troutman Pepper on

The America Invents Act established inter partes review and post-grant reviews mechanisms to challenge the validity of issued United States patents. These procedures were created to improve patent quality, and were introduced...more

Troutman Pepper

Analysis of Inter Partes Review and Post-Grant Review in the Life Sciences Industry Through First Quarter 2015

Troutman Pepper on

The recently established inter partes review (IPR) and post-grant review (PGR) of the America Invents Act have been in the spotlight lately, especially now that the life sciences industry has begun to utilize these...more

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