Patent Claims Must Be “Clear” At The PTAB: The Nautilus “Reasonable Certainty” Standard For Claim Definiteness Not Applied In AIA Post Grant Proceedings
By John Marlott The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the applicant regards as his...
Estopped or Not? District Court Says No Estoppel for Grounds Not Presented in an IPR Petition
By Doug Pearson Among the thorny questions for an IPR petitioner is how estoppel may affect invalidity positions asserted by the petitioner/litigant in a parallel district court proceeding, given the grounds of unpatentability asserted by the petitioner in an IPR...
Federal Circuit Establishes Legal Standard for Demonstrating Standing in an Appeal from a Final Written Decision in Inter Partes Review
By Rich Graham and Dave Cochran On January 9, 2017, the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) issued a decision in Phigenix, Inc. v. ImmunoGen, Inc., No. 2016-1544 (Fed. Cir. Jan. 9, 2017) establishing the legal standard for...
PTAB Denies IPR Request As Failing To Meet Threshold Determination Under 35 U.S.C. § 102
By Kevin Clark and Carl Kukkonen The Patent Trial and Appeal Board (“Board”) recently reviewed the threshold necessary to institute a request for inter partes review (IPR) under 35 U.S.C. § 102. Munchkin, Inc. v. Int’l Refills Co., Ltd., IPR2016-01154 (December 12,...
PTAB Invalidates Multiple Claims of Patent for Treating Anemia with Iron Carbohydrate Complexes and Denies Motion to Amend Claims
By J. Jason Williams and J. Patrick Elsevier, Ph.D. On January 4, 2017, in a final written decision in IPR2015-01490, the PTAB found 17 claims of a patent directed to methods of treating iron disorders by administering certain iron carbohydrate complexes were...