by David Maiorana | Jun 22, 2017 | 325(d) issues, Prior Art Issues
By Dave Maiorana It is not always possible for a party seeking to challenge a patent in an IPR to find prior art patents or printed publications that the USPTO has not already considered. Often the best available prior art comes from the references cited to (or by)...
by Cary Miller | Jan 30, 2017 | 325(d) issues, Pharmaceutical, Real Party in Interest
By Kunyong Yang and Cary Miller, Ph.D. On January 19, 2017, the PTAB instituted inter partes review of U.S. Patent No. 8,822,438 (“the ’438 patent”) filed by Wockhardt Bio AG (“Wockhardt”) (IPR2016-01582). The ’438 patent is owned by Janssen Oncology, Inc....
by Jones Day's PTAB Team | Mar 28, 2016 | 325(d) issues
Summary of Presentation Slides: Litigants have long utilized duplicative filing of IPR or CBM petitions to obtain the benefit of arguments made by earlier petitioners and to improve leverage for settlements with patent owners. Such litigants often rely an important...
by Jones Day's PTAB Team | Mar 8, 2016 | 325(d) issues, Preliminary Responses
In Harmonic, Inc. v. AVID Technology, Inc., a Federal Circuit panel affirmed the PTAB’s decision in IPR2013-00252 and ratified certain aspects of the Board’s handling of redundant grounds of unpatentability. In PTAB trials, such as IPRs, petitioners can...
by Jones Day's PTAB Team | Jan 29, 2016 | 325(d) issues
The AIA provides PTAB panels a significant amount of discretion in managing their docket, from joinder provisions to the ability to stay or consolidate related, concurrent proceedings in other areas of the Office. 35 U.S.C. § 325(d) provides the Board discretion in...
