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...
ITC Judge Takes Notice of PTAB Institution Denials
By Matt Johnson PTAB trials are nearly always (~ 4 out of 5) driven by some concurrent litigation need, either a district court complaint of infringement filed against the petitioner or an International Trade Commission (ITC) investigation initiated by the patent...
Beware Of Relying on Your Confidential Information
By Dave Maiorana If you are involved in an IPR and you are contemplating whether to rely on your own confidential information as part of a filing, you need to consider the risk that the Board will deny your motion to file under seal because it relied on that...