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...
Board Tackles Constitutional Law — Finds Eleventh Amendment Sovereign Immunity Applies to PTAB
By Joe Sauer The PTAB recently dismissed three IPR Petitions filed against the University of Florida Research Foundation on the basis of Eleventh Amendment sovereign immunity. See, Covidien LP v University of Florida Research Foundation Incorporated, IPR2016-01274;...
Objective Indicia of Non-obviousness Shine as Primary Consideration in PTAB Decision
By Matt Johnson While touted by the Federal circuit as “a powerful tool for courts faced with the difficult task of avoiding subconscious reliance on hindsight,” objective indicia of non-obviousness have, to date at the PTAB, been little more than a secondary...
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...