News & Analysis as of

Pharmaceutical Patents Patent Litigation Final Written Decisions

Goodwin

The Appeals Review Panel’s In Re Xencor Decision: The USPTO Provides Its Position on Written Description and Means-Plus-Function...

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On May 17, 2024, an Appeals Review Panel (ARP) of the United States Patent and Trademark Office (“USPTO”) released its decision in Ex parte Chamberlain (referred to in Federal Circuit proceedings as In re Xencor;...more

Venable LLP

Chugai, Genentech, and Hoffmann-La Roche Dismiss Appeals of Actemra® Patent IPR Final Written Decisions

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On February 12, 2024, Chugai, Genentech, and Hoffmann-La Roche (Roche) filed a motion to voluntarily dismiss CAFC Appeals 24-1111 and 24-1115, appealing the Final Written Decisions (FWDs) in IPR2022-00578 and IPR2022-00579,...more

Sheppard Mullin Richter & Hampton LLP

PTAB’s Authority to Issue a Final Written Decision After a Statutory Deadline

In Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc. 2022-1482 (Fed. Cir. Nov. 21, 2023), the case addresses the Patent Trial and Appeal Board’s (“PTAB’s”) authority to issue a Final Written Decision in a post grant review...more

Haug Partners LLP

Purdue v. Collegium: Upholding the Board’s Authority to Issue a Final Written Decision Even After the Statutory Deadline Has...

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On November 21, 2023, the Federal Circuit in Purdue Pharma L.P et al. v. Collegium Pharm., Inc. (i) affirmed that the Patent Trial and Appeal Board (“Board”) has authority to issue a Final Written Decision after the statutory...more

McDermott Will & Emery

Delay Is Okay: Final Written Decisions Can Be Issued After Statutory Deadline

McDermott Will & Emery on

In a matter of first impression, the US Court of Appeals for the Federal Circuit concluded that the Patent Trial & Appeal Board has the authority to issue a final written decision (FWD) in a post-grant review (PGR) proceeding...more

McDonnell Boehnen Hulbert & Berghoff LLP

Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp. (Fed. Cir. 2022)

The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) Final Written Decision (FWD) in an inter partes review (IPR) that Mylan Pharmaceuticals failed to show the claims of U.S. Patent No. 7,326,708 were...more

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

2021 PTAB Year in Review: Analysis & Trends: Biologics at the PTAB: Statistics and Insights into Notable Biologics Decisions

In June 2021, the US Patent and Trademark Office (USPTO) published an update to its study of America Invents Act (AIA) trials involving challenges to Orange Book-listed and biologic patents from September 16, 2012, through...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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Mylan Labs. Ltd v. Janssen Pharmaceutica, N.V.,...

Mylan appealed from a Patent Trial and Appeal Board (Board) discretionary denial of institution of an inter partes review (IPR) proceeding. The Board declined to institute Mylan’s IPR under NHK-Fintiv, a multi-factor analysis...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

McDonnell Boehnen Hulbert & Berghoff LLP

Biogen Int'l GmbH v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2021)

As is well-known, Congress established the Federal Circuit as a circuit court of appeals to harmonize U.S. patent law in an environment where regional Circuit Courts had developed their own judicial interpretations of the...more

Jones Day

PTAB Decision Conflicts With District Court’s

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The PTAB and District Courts do not always see eye to eye when it comes to prior art. On August 21, 2020, the Board issued a trio of final written decisions refusing to invalidate the claims of three patents, two of which...more

McDonnell Boehnen Hulbert & Berghoff LLP

Biogen Int'l GmBH v. Mylan Pharmaceuticals Inc. (N.D.W. Va. 2020)

The written description requirement has had a twenty-five year renaissance, particularly in the chemical and biotechnology arts as a way of restricting claim scope to what an inventor has actually invented (see Regents of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Pfizer Inc. v. Chugai Pharmaceuticals Co. (Fed. Cir. 2020)

The Federal Circuit continued its explication of the standing issue for unsuccessful petitioners in inter partes review (see "Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp. (Fed. Cir. 2020)") in Pfizer Inc. v....more

Alston & Bird

Patent Case Summaries - December 2019 #3

Alston & Bird on

A weekly summary of the precedential patent-related opinions issued by the Court of Appeals for the Federal Circuit and the opinions designated precedential or informative by the Patent Trial and Appeal Board....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2019 #3

PATENT CASE OF THE WEEK - General Electric Co. v. United Techs. Corp., Appeal No. 2017-2497 (Fed. Cir. July 10, 2019) - The Case of the Week focuses on standing to bring an appeal of an adverse decision by the PTAB in...more

McDermott Will & Emery

Balancing Act: Broad Definition in Specification Precludes Narrow Claim Construction

McDermott Will & Emery on

Affirming a Patent Trial and Appeal Board (PTAB) final written decision and a district court decision holding patent claims invalid, the US Court of Appeals for the Federal Circuit found that a broad definition in the...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: Skepticism of FDA Supports Finding of Nonobviousness and Patent Eligibility Not Within Scope of Appeal of an IPR

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board finding nonobvious the claims of U.S. Patent No. 7,772,209 (the “’209 Patent”), which are directed to a method of treating cancer. The claims...more

Knobbe Martens

Federal Circuit Review - February 2019

Knobbe Martens on

PTAB May Invalidate Claims on Reconsideration Based on Grounds Raised in the Institution Decision that Were Not Originally Instituted - In AC Technologies S.A., V. Amazon.Com, Inc., Blizzard Entertainment, Inc., Appeal No....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - February 2019

PATENT CASE OF THE WEEK - Duncan Parking Techs., Inc. v. IPS Group, Inc. and IPS Group, Inc. v. Duncan Solutions, Inc. et al., Appeal Nos. 2018-1205, -1360 (Fed. Cir. January 31, 2019) - The Court this week provided a...more

Knobbe Martens

Mylan Pharmaceuticals Inc. v. Research Corporation Tech.

Knobbe Martens on

Federal Circuit Summary - Before Lourie, Bryson, and Wallach. Appeal from the Patent Trial and Appeal Board. Summary: A party joined to an inter partes review has the right to appeal the Board’s final written decision...more

Foley & Lardner LLP

A Fresh Look At The Lead Compound Analysis

Foley & Lardner LLP on

I previously wrote about the standing issue addressed in Amerigen Pharmaceuticals v. UCB Pharma GMBH. In this article, I look at the lead compound analysis that led the USPTO Patent Trial and Appeal Board (PTAB) to uphold the...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - January 2019 #2

PATENT CASE OF THE WEEK - WesternGeco LLC v. Ion Geophysical Corp., Appeal Nos. 2013-1527, 2014-1121, -1526, -1528 (Fed. Cir. Jan. 11, 2019) - In the continuing saga between WesternGeco and ION Geophysical, a Federal...more

Akin Gump Strauss Hauer & Feld LLP

References Introduced During IPR Proceeding Not Necessarily New Evidence to Which Patent Owner Had No Opportunity to Respond

On May 14, 2018, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) Final Written Decision in an inter partes review (IPR) proceeding holding all claims of Anacor Pharmaceuticals, Inc.’s (“Anacor”)...more

Goodwin

Biologics IPR Updates

Goodwin on

Last week, the Patent Trial and Appeal Board (“Board”) denied institution of four IPR petitions on biologics-related patents. First, the Board denied institution of IPR2017-01987 and IPR2017-01988, both filed by Sandoz Inc. ...more

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