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...
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...