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Secondary Considerations Carry The Day

Secondary Considerations Carry The Day

by David Maiorana | May 19, 2017 | PTAB News, PTAB Trial Basics

By Dave Maiorana We have previously reported (on February 1, on March 1, and on March 30) how patent owners have seen a mixed bag of results in trying to convince PTAB panels that secondary considerations of non-obviousness were sufficient to outweigh a prima facie...
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,...
IPRs Are Not Time Barred by an Earlier ITC Complaint

IPRs Are Not Time Barred by an Earlier ITC Complaint

by Carl Kukkonen | Mar 28, 2017 | PTAB Trial Basics, Time Limits

By Yury Kalish Ph.D. and Carl Kukkonen See also, Jones Day ITC Blog’s posting on the Bosch case at: http://jonesdayitcblog.com/clock-file-ipr/ Since their introduction as part of the America Invents Act, Inter Partes Reviews (IPRs) have proven to be a powerful...
In an IPR, the Burden of Persuasion in an Obviousness Challenge Never Shifts to Patentee

In an IPR, the Burden of Persuasion in an Obviousness Challenge Never Shifts to Patentee

by Cary Miller | Mar 15, 2017 | PTAB Trial Basics

By Raffaella Faraoni, Ph.D. and Cary Miller, Ph.D. On March 3, 2017, in a final written decision in IPR2015-01838, the PTAB rejected an obviousness challenge brought by DuPont against a patent owned by Furanix Technologies B. V. directed to methods for preparing the...
PTAB Rejects Flawed Inherency Argument Against Drug Composition Patent

PTAB Rejects Flawed Inherency Argument Against Drug Composition Patent

by Jones Day's PTAB Team | Feb 24, 2017 | Pharmaceutical, PTAB Trial Basics, Trial Institution

By Dominic J. Yee, Ph.D. and J. Patrick Elsevier, Ph.D. On February 3, 2017, the PTAB denied a petition by Amneal Pharmaceuticals LLC (“Amneal”) to institute an inter partes review of Hospira Inc.’s patent directed to pharmaceutical compositions of the sedative...
PTAB Denies IPR Request As Failing To Meet Threshold Determination Under 35 U.S.C. § 102

PTAB Denies IPR Request As Failing To Meet Threshold Determination Under 35 U.S.C. § 102

by Carl Kukkonen | Jan 16, 2017 | Prior Art Issues, PTAB Trial Basics

By Kevin Clark and Carl Kukkonen The Patent Trial and Appeal Board (“Board”) recently reviewed the threshold necessary to institute a request for inter partes review (IPR) under 35 U.S.C. § 102.  Munchkin, Inc. v. Int’l Refills Co., Ltd., IPR2016-01154 (December 12,...
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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.