Bringing Prosecution History Back Into Claim Construction Under Broadest Reasonable Interpretation
By Lin Yu Ph.D. and Carl Kukkonen In D’Agostino v. MasterCard Int’l Inc. 2016-1592 & 2016-1593, the Federal Circuit vacated the Patent Trial and Appeal Board invalidation decisions in two related inter partes review proceedings, holding that the Board’s claim...
PTAB Institutes IPR Proceedings Against Mayne Pharma’s Antifungal Formulation Patent
By Unmesh Shah, Ph.D. and Cary Miller, Ph.D. The PTAB instituted an IPR on claims of Mayne Pharma International Pty Ltd.’s (“Mayne”) U.S. Patent No. 6,881,745 B2 covering formulations of azole antifungals in IPR2016-01186. In response to Merck Sharp & Dohme...
Routine Trial-and-Error Approach to Protein Formulation Is Not Sufficient to Establish Obviousness Absent a Reasonable Expectation of Success in Achieving the Claimed Formulation
By Raffaella Faraoni, Ph.D. and J. Patrick Elsevier, Ph.D. On December 22, 2016, in a final written decision in IPR2015-01537, the PTAB rejected an obviousness challenge brought by Momenta Pharmaceuticals, Inc. against a patent owned by Bristol-Myers Squibb directed...
Federal Circuit Agrees to En Banc Rehearing on Whether PTAB’s 1-Year-Bar Decisions Are Reviewable
By Matt Johnson Today the Federal Circuit agreed to rehear en banc the panel decision in Wi-Fi One v. Broadcom Corp. on the issue of whether the PTAB's findings regarding 35 U.S.C. § 315(b)'s one year bar can be reviewed on appeal. This question tests the interplay...
PTAB Adds a Significant Body of Work in 2016
By Joe Sauer The Patent Trial and Appeal Board publishes monthly statistics tracking numerous aspects of AIA Petition filings and how they are resolved. The AIA Trial Statistics through the end of November 2016 are available here. Reviewing the data for 2016, the most...