En Banc Federal Circuit Hears Arguments Concerning Claim Amendments In Post-Grant Proceedings: In re: Aqua Products
By John Marlott As we reported earlier (link), the en banc Federal Circuit is currently considering two important questions involving the PTO’s rules for claim amendments and the PTAB’s handling of motions to amend during IPR proceedings, In re: Aqua Products, Inc.,...
When Relying upon Scientific Test Data in its Petition, the Petitioner Must Provide Sufficient Information to Permit the PTAB to Evaluate the Data and its Reliability
By Jennifer Chheda, Ph.D. and Cary Miller, Ph.D. On November 14, 2016, the PTAB issued a Final Written Decision upholding Paragon Bioteck, Inc.’s patent, U.S. Patent No. 8,859,623 B1 (the “’623 patent”), relating to a method of using an ophthalmic composition for...
Swearing Behind a Prior-Art Reference Requires “Reasonably Continuous Diligence,” Not “Continuously Exercised Reasonable Diligence”
By Doug Pearson In a decision dated November 15, 2016, the Court of Appeals for the Federal Circuit vacated and remanded the PTAB’s decision in IPR2014-00233, in which the Board found (i) that Perfect Surgical Techniques, Inc. (“PST”), owner of U.S. Patent No....
Apple v. Ameranth: Federal Circuit Partially Reverses PTAB and Finds All Claims for Electronic Menus Unpatentable
By Carl Kukkonen and Stephanie Brooker On November 29, 2016, in Apple Inc. v. Ameranth, Inc. 15-1703, the Federal Circuit affirmed the Patent Trial and Appeal Board (PTAB) findings of unpatentable independent claims in a Covered Business Method (CBM) review and...
Invalidity Defenses Raised but not Instituted During IPR Are not Barred by Statutory or Judicial Estoppel
By Lisamarie LoGiudice and Patrick Elsevier In Depomed, Inc. v. Purdue Pharma L.P. et al, 3-13-cv-00571, the District of New Jersey held that neither statutory nor judicial estoppel bars Purdue from continuing to assert invalidity defenses that were not instituted...