District Court Considers IPR In Deciding Alice Motion
By Doug Clark and Christian Platt On November 20, 2017, a district court denied a defendant’s Federal Rules of Civil Procedure (“Rule”) 12(b)(6) motion that sought to dismiss the case on the ground that the asserted patents were ineligible under 35 U.S.C. § 101. ...
The Federal Circuit Criticizes A PTAB Partial Institution
By Dave Maiorana The PTAB’s practice of partially instituting IPRs has been in the news lately, with Jones Day recently arguing against that practice at the Supreme Court on behalf of the SAS Institute (“SAS”). On December 5, 2017, the week after the Supreme Court...
Inherent Obviousness: Available IPR Rationale With a High Standard
By Jeff Giering, Ph.D. and Cary Miller, Ph.D. On November 28, 2017, the PTAB issued a final written decision upholding the patentability of U.S. Patent No. 6,667,061 (IPR2016-01096). The ’061 patent is owned by Alkermes Pharma Ireland, Ltd. and Alkermes Controlled...
Supreme Court Reviews Constitutionality of PTAB Proceedings
By Matt Johnson On Monday, the Supreme Court heard arguments regarding the constitutionality of PTAB post-grant trials in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, No. 16-712 (U.S.). The question posed to the Court is “Whether inter partes...
SAS Institute Argues Before Supreme Court Against PTAB’s Partial-Decision Practice
By Greg Castanias, John Marlott, and Dave Cochran In a closely followed case before the U.S. Supreme Court on behalf of SAS Institute Inc., a cross-office, cross-practice Jones Day team has challenged the Patent Trial and Appeal Board’s (PTAB) practice to elect to...