IPRs Are Not Time Barred by an Earlier ITC Complaint
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 tool...
Unsuccessfully Using the Wayback Machine to Establish Status as a Printed Publication
By Jeff Giering, Ph.D. and Cary Miller, Ph.D. On March 6, 2017, the PTAB issued a pair of final written decisions upholding the patentability of U.S. Patent Nos. 7,932,268 (IPR2015-01836) and 8,618,135 (IPR2015-01835), in challenges filed by the Coalition for...
Federal Circuit to PTAB – No 102 Gap Filling
By Dave Cochran In a precedential opinion dated March 14, 2017, the Federal Circuit reversed the PTAB, holding that in finding a claim anticipated under 35 USC § 102, the Board cannot “fill in missing limitations” simply because a skilled artisan would immediately...
Including Functional Claim Language Helped Save Pozen’s VIMOVO® Patents
By Bing Liang, Ph.D. and Cary Miller, Ph.D. On February 28, 2017, the PTAB held that the petitioner Lupin had not shown that the challenged claims in two of Pozen’s patents were invalid (IPR2015-01773 and IPR2015-01775). These cases show the advantage of using...
In an IPR, the Burden of Persuasion in an Obviousness Challenge Never Shifts to Patentee
The PTAB rejected an obviousness challenge brought against a patent directed to methods for preparing the known compound 2,5-furan dicarboxylic acid.