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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,...
Fed. Circuit Rules that Parties Must Have Opportunity to Respond/Rebut Late-Made Factual Assertions

Fed. Circuit Rules that Parties Must Have Opportunity to Respond/Rebut Late-Made Factual Assertions

by Jones Day's PTAB Team | Nov 14, 2016 | Federal Circuit Appeal, PTAB Trial Basics

By: Tom Ritchie The Federal Circuit vacated the Patent Trial and Appeal Board’s decision in IPR2013-508 after finding that its refusal to allow NuVasive, the patent owner, to respond to factual matters violated the Administrative Procedure Act (APA).  In re: ...
Federal Circuit Rejects PTAB Burden Shifting Scheme in IPR and Confirms Burden Lies With the Petitioner Throughout Trial

Federal Circuit Rejects PTAB Burden Shifting Scheme in IPR and Confirms Burden Lies With the Petitioner Throughout Trial

by Jones Day's PTAB Team | Oct 20, 2016 | Federal Circuit Appeal, Petitions, PTAB Trial Basics

On July 25, 2016, the United States Court of Appeals for the Federal Circuit issued a decision in In re: Magnum Tools Int’l, Ltd., No. 2015-1300 (Fed. Cir. Jul. 25, 2016) confirming that the burden of proving invalidity lies with the petitioner throughout the entire...
PTAB Publishes August 2016 Trial Statistics – 34% of Final Written Decisions in Favor of Patent Owner

PTAB Publishes August 2016 Trial Statistics – 34% of Final Written Decisions in Favor of Patent Owner

by Matthew Johnson | Oct 13, 2016 | Final Written Decisions, Petitions, PTAB News, PTAB Trial Basics, Trial Institution

By Matt Johnson (profile) The Patent Trial and Appeal Board has released AIA trial filing and disposition numbers for August 2016. Filings remained near the 150 mark, with 143 total trials being requested in August, 136 of those being requests for Inter Partes Review....
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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.