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...
Successful Rehearing of WesternGeco LLC v. PGS Geophysical- What Went Right?
By Kamilah Alexander and Carl Kukkonen Conventional wisdom endorses the view that petitioning for a rehearing of a Patent Trial and Appeal Board (“Board”) final written decision is a waste of both attorney and client resources (i.e., time and money). Does...
Live Testimony Offered — Board Says “No, Thank You”
By Matt Johnson The Patent Trial and Appeal Board's Trial Practice Guide, 77 Fed. Reg. 48756, includes discussions of types of discovery that may come into play in post-grant trials, including the possibility of live testimony. The Guide states that "[d]iscovery is a...
Battle-Of-The-Stays – Chalk Up Another Victory to the Petitioners
By Matt Johnson The multiple flavors of review and prosecution at the Patent Office produce an environment where a patent family could be subject to inconsistent results. Conceivably, patents in a pre-AIA patent family could simultaneously be subject to regular...