Federal Circuit Vacates and Remands to PTAB Because of Insufficient Analysis of Obviousness in IPR
By Yury Kalish Ph.D. and Matt Johnson In a unanimous opinion issued on February 14, 2017, a three-judge panel of the Federal Circuit vacated the Board’s obviousness determination in Apple’s inter partes review against PersonalWeb and remanded for further proceedings,...
PTAB Rejects Flawed Inherency Argument Against Drug Composition Patent
By Dominic J. Yee, Ph.D. and J. Patrick Elsevier, Ph.D. On February 3, 2017, the PTAB denied a petition by Amneal Pharmaceuticals LLC (“Amneal”) to institute an inter partes review of Hospira Inc.’s patent directed to pharmaceutical compositions of the sedative...
Can PTAB and Courts Reach Different Decisions? Definitely So
By Christian Damon and John Marlott In a post last month we explained that the standard applied by the PTAB in post grant proceedings for determining whether claims are sufficiently definite under 35 U.S.C. §112(b) is more demanding than the standard applied by U.S....
PTAB Muddies the Murky Water of IPR Estoppel after Shaw
By Rich Graham and Dave Cochran The Federal Circuit’s decision in Shaw[1] affirmed the PTAB’s policy that a Petitioner was not estopped from requesting inter partes review (“IPR”) based on prior art previously included in a petition for IPR, but for which institution...
Old Drug Label Still Requires Authentication of Publication Date
By Lin Yu, Ph.D. and Cary Miller, Ph.D. In IPR2016-01566 (Mylan Pharmaceuticals Inc. v. Boehringer Ingelheim International GMBH), the PTAB denied institution of an inter partes review of U.S. Patent No. 9,173,859, in part, because Petitioner –Mylan – failed to provide...