PTAB Institutes Separate IPR Proceedings Filed by Codefendants, Finding that the Later IPR Proceeding Was Not Barred by 35 U.S.C. § 325(d)
By Kunyong Yang and Cary Miller, Ph.D. On January 19, 2017, the PTAB instituted inter partes review of U.S. Patent No. 8,822,438 (“the ’438 patent”) filed by Wockhardt Bio AG (“Wockhardt”) (IPR2016-01582). The ’438 patent is owned by Janssen Oncology, Inc....
Another District Court Weighs in on the Scope of Statutory Estoppel Under 35 U.S.C. § 315.
By Geoffrey Gavin In Verinata Health, Inc. v. Ariosa Diagnostics, Inc., No. 3:12-cv-05501-SI, Dkt. No. 319 (N.D. Cal. Jan. 19, 2017) (Slip Op.), Judge Illston in the Northern District of California addressed the scope of statutory estoppel under § 315 in the context...
PTAB Upholds Sloan Kettering’s Cancer Immunotherapy Patent
By Galina Steinberg-Tatman, Ph.D. and Cary Miller, Ph.D. On December 16, 2016, the PTAB issued a final written decision in case IPR2015-01719, upholding all the claims of U.S. Patent 7,446,190, owned by Sloan Kettering Institute for Cancer Research (“Sloan”) and...
The Federal Circuit Provides Another Data Point On the Interplay Between the PTAB and the Courts
By Dave Maiorana Since enactment of the AIA and the start of the new post-grant review proceedings at the USPTO, practitioners have speculated on the interaction between the PTAB and the courts. Yes, AIA post-grant proceedings were expressly intended to be lower-cost...
Failure to Make IPR Declarant Available for Deposition May Result in Exclusion
By Dave Maiorana Although this seems pretty obvious, failure to make an IPR declarant available for deposition likely will cause the Board to exclude the declarant’s testimony from the trial, absent agreement of the parties or special circumstances. In 1964 Ears,...