IP Newsflash

A petition for inter partes review (IPR) has been denied because the petitioner failed to rebut the patent owner’s claim of priority raised in its preliminary response. In denying institution, the Patent Trial and Appeal Board refused to address additional lack-of-priority theories in petitioner’s pre-institution reply brief because those theories had not been raised in the IPR petition.

For nearly two decades, the Eastern District of Texas has been a hotbed of patent litigation. Even after the Supreme Court’s 2017 TC Heartland decision narrowed a plaintiff’s venue options, the Eastern District of Texas still sees more patent infringement cases than almost any other jurisdiction. It has controlled its docket by, among other things, adopting local patent rules that require early disclosure of Infringement and Invalidity Contentions. For example, Patent Rule 3-3 requires each party opposing a claim of patent infringement to serve Invalidity Contentions detailing the party’s allegations that each challenged claim is invalid under 35 U.S.C. §§ 102, 103 or 112. Last month, Chief Judge Gilstrap augmented this rule with a standing order that requires a party to serve “Eligibility Contentions” if the party intends to allege that any claim is directed to unpatentable subject matter.

The Federal Circuit has affirmed a decision by the Patent Trial and Appeal Board finding nonobvious the claims of U.S. Patent No. 7,772,209 (the “’209 Patent”), which are directed to a method of treating cancer.

The Federal Circuit reversed an inter partes review (IPR) decision holding that the Patent Trial and Appeal Board (the “Board”) incorrectly applied the standard for an inventor to prove diligence in reducing the invention to practice.

The Patent Trial and Appeal Board (PTAB or “Board”) recently denied the institution of an inter partes review (IPR) petition where the Patent Office had previously considered the asserted prior art, despite Petitioner’s attempt to present that prior art in a different way.

The Federal Circuit has affirmed the final written decisions of a Patent Trial and Appeal Board (the “Board”) panel in six related inter partes review (IPR) proceedings. The Board held in those proceedings that (1) a reference is not publicly accessible if it is not meaningfully indexed such that an interested artisan can locate it, and (2) lack of a transition word between the preamble and the body of a claim does not cause the preamble to limit the scope of a claim.

In an August 18, 2017, decision, the Patent Trial and Appeal Board (PTAB or the “Board”) granted a patent owner’s request for rehearing and modified a previously issued Final Written Decision to hold that the petitioner failed to show that any of the challenged claims were unpatentable.

Under 35 U.S.C. § 102, the on-sale bar generally holds that the sale of a patented invention more than one year before the filing date invalidates the patent. Before the America Invents Act (AIA), courts held that confidential sales of the patented invention triggered the on-sale bar—no public disclosure of the invention or the sale was required. The AIA—which applies to patents filed after March 16, 2013—amended §102 to state that a patent is invalid if it was “in public use, on sale, or otherwise available to the public before the effective filing date.” In Helsinn Healthcare v. Teva Pharmaceuticals, interpreting the on-sale provision under the AIA for the first time, the Federal Circuit held that the AIA’s on-sale bar similarly does not require that the sale of the patented invention publicly disclose the details of the invention if the existence of the sale is public.