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Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer

Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer

by Jones Day's PTAB Team | May 12, 2017 | Preliminary Responses, PTAB Trial Basics

In Aylus Networks, Inc. v. Apple, Inc., No. 16-1599 (Fed. Cir. May 11, 2017) (“Federal Circuit Op.”), the Federal Circuit affirmed the district court’s decision that Apple did not infringe Aylus’s patents.  See Aylus Networks, Inc. v. Apple Inc., No. 13-cv-04700-EMC,...
Federal Circuit Holds Objective Indicia Must Be Linked to Novel Features

Federal Circuit Holds Objective Indicia Must Be Linked to Novel Features

by Jones Day's PTAB Team | May 9, 2017 | Pharmaceutical

By J. Jason Williams and J. Patrick Elsevier, Ph.D. In Novartis AG v. Torrent Pharms. Ltd. (2016-1352), the Federal Circuit affirmed the PTAB’s decision in consolidated IPR proceedings (IPR2014-00784, IPR2015-00518) invalidating all claims of U.S. Patent 8,324,283. In...
A Single Bite at the Apple: The Board’s Discretion to Deny Institution under § 314(a)

A Single Bite at the Apple: The Board’s Discretion to Deny Institution under § 314(a)

by Jones Day's PTAB Team | Apr 28, 2017 | Trial Institution

By Albert Liou In a series of related decisions issued in April 2017, the PTAB exercised its discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution of inter partes review petitions filed by Xactware Solutions, Inc. against Eagle View...
Pharmaceutical Compound Nonobvious Absent Evidence Suggesting Specific Modification to Prior Art Compound

Pharmaceutical Compound Nonobvious Absent Evidence Suggesting Specific Modification to Prior Art Compound

by Jones Day's PTAB Team | Apr 20, 2017 | Pharmaceutical

By Wanli Tang, Ph.D. and J. Patrick Elsevier, Ph.D. The PTAB issued a final written decision in IPR2016-00204, upholding the validity of claims 1–13 of Patent RE38,551 E (“the ’551 patent”), which covers the antiepileptic drug VIMPAT® (lacosamide). The petitioner,...
PTAB Grants Motion to Amend Claims, Kind Of

PTAB Grants Motion to Amend Claims, Kind Of

by Jones Day's PTAB Team | Apr 7, 2017 | Amendment Practice, Pharmaceutical

By Lisamarie LoGiudice, Ph.D. and J. Patrick Elsevier, Ph.D. In Amerigen Pharmaceuticals Limited v. Shire LLC, IPR2015-02009 (March 31, 2017), the PTAB granted Shire’s Motion to Amend the claims in U.S. Reissued Patent RE 42,096, listed in the FDA’s Orange Book as...
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    The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.