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By Kate Nuehring Su
The PTAB's Chief Administrative Patent Judge issued a memorandum on November 21, 2017, providing guidance on motions to amend in view of the en banc decision of the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017).
By Katherine Neville, Ph.D.
In Novartis AG v. Noven Pharm. Inc., Appeal 2016-1678-1679 (April 2017), Novartis appealed two PTAB decisions holding claims of two patents obvious over cited prior art (IPR2014-00549 and IPR2014-00550), arguing that previous judicial holdings of non-obviousness should control the PTAB's factual findings and that the claims should have been held non-obvious
By Heather R. Kissling
The Federal Circuit's decision in Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., 845 F.3d 1357 (Fed. Cir. 2017) attracted much attention for applying the theory of divided infringement in the context of pharmaceutical therapeutic regimen claims.
By Michael Weiner
Two recent Federal Circuit decisions illustrate how an error in construing claims may lead the court to reverse a PTAB final written decision.
By Sandip H. Patel
The Patent Office is also raising by 50% the fees for seeking institution and trial on claims in excess of the 20/15 claims that are part of the standard fees.
By Jennifer Burnette
On November 7, 2017, the USPTO issued a Final Rule recognizing that communications between U.S. and foreign patent practitioners and their clients that are reasonably necessary and incident...
By Kate Nuehring Su
The Board's recent decision in Veeam Software Corp. v. Veritas Technologies, LLC, Case No. IPR2014-00090 (PTAB July 17, 2017), provides patent practitioners with a framework for analyzing proposed substitute claims.
By Julianne Hartzell
On October 24, 2017, the PTAB held its inaugural "Chat with the Chief" webinar. The main topic of the webinar was to discuss multiple petitions filed against the same patent.
By Tron Fu
Earlier this year, the Federal Circuit held "that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction...
By Matthew R. Carey
In a split opinion in Homeland Housewares, LLC v. Whirlpool Corporation, the Federal Circuit has again overturned a final written decision issued by the PTAB determining that challenged claims...
By Michael Weiner
Accordingly, on remand of this case and in other IPRs, absent additional rulemaking the PTAB cannot place the burden of persuasion on patent owners.
By Sandip H. Patel
An eleven-judge en banc panel of the Federal Circuit issued its long awaited decision in Aqua Products, Inc. v. Matal, Appeal 2015-1777, on October 4, 2017, ...
By Heather R. Kissling
Recent Federal Circuit decisions reversing or remanding PTAB holdings of obviousness have faulted the Board for failing to clearly articulate its reasoning.
By Michael Weiner
PTAB rules prohibit raising new arguments in a reply brief, but it can be difficult to distinguish between an improper reply argument and a proper rebuttal.
By Nelson M. Rosario
Until solutions to usability, interoperability, scalability, and privacy are developed, widespread adoption will be hampered.