USPTO Invites Suggestions for PTAB Procedural Reform Initiative
By Joe Sauer The Patent Office has announced an initiative to make procedural reforms in an effort to improve PTAB trial proceedings, particularly inter partes review proceedings. As part of this initiative, the USPTO will consider historical data from the last five...
Allergan Successfully Invalidates Claims Relating to Using Botox to Treat Back Pain
By Unmesh Shah, Ph.D. and Cary Miller, Ph.D. Allergan is typically the patent holder in these types of disputes, however, it recently successfully played the role of petitioner in an IPR against 1474791 Ontario Ltd.’s U.S. Patent No. 6,806,251 covering the use of...
Pharmaceutical Compound Nonobvious Absent Evidence Suggesting Specific Modification to Prior Art Compound
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,...
SAS Urges High Court to Restore Balance to AIA Post-Grant Framework
By Richard A. Graham and Gregory A. Castanias Who makes the country’s patent laws—Congress, or the Patent Office? A recent petition for certiorari filed by SAS Institute, Inc.—represented by a team of Jones Day lawyers—asks the Supreme Court to decide that question...
Fed Circ Affirms Conflicting Invalidity Determinations from District Court and PTAB
By Christian Damon, Patrick O'Rear, and John Marlott As we have previously discussed on this blog, when considering an issue of patentability such as definiteness under section 112, the PTAB and a district court may properly reach opposite conclusions. In Tinnus...