PTAB Interprets “By Another” in 35 § 102(e)
By Amanda Leckman and Carl Kukkonen In connection with a dispute over parking meters, the PTAB, on March 27, 2017, issued a decision in IPR2016-00067 that Duncan Parking Technologies, Inc. (DPT) had not met its burden of showing, by a preponderance of evidence, that...
A Single Bite at the Apple: The Board’s Discretion to Deny Institution under § 314(a)
By Albert Liou In a series of related decisions issued in April 2017, the PTAB exercised its discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution of inter partes review petitions filed by Xactware Solutions, Inc. against Eagle View...
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,...