IPR Institution Is Not Permanent, and Is Nonappealable – Part 2

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John P. Isacson

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir., January 13, 2020)

On August 29, 2019, we reported on the Biodelivery decision, where the PTAB received on remand a partially-instituted IPR decision with directions to fully institute the IPR on all petitioned grounds. Instead of fully instituting the IPR, the PTAB declined to institute the IPR at all. Petitioner appealed, and the Federal Circuit dismissed. Continue reading “IPR Institution Is Not Permanent, and Is Nonappealable – Part 2”

Supreme Court Denies Review In Three Section 101 Cases

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John P. Isacson

On January 13, 2020, the U.S. Supreme Court denied certiorari in the following cases:

HP Inc. v. Berkheimer (18-415) (method of archiving in a computer);

Hikma Pharmaceuticals, et al. v. Vanda Pharmaceuticals (18-817) (method of treating a patient with schizophrenia); and

Athena Diagnostics, Inc. et al. v. Mayo Collaborative, et al. (19-430) (method of diagnosing neurotransmission or developmental disorders).

 

The PTAB’s Erroneous Presumption

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John P. Isacson

Fox Factory, Inc. v. SRAM, LLC, Appeal Nos. 2018-2024, -2025 (Fed. Cir. December 18, 2019)

SRAM owned two patents pertaining to bicycle chainrings, which are toothed disks that engage bicycle chains. Fox filed inter partes reviews (IPR) against the patents. The Patent Trial and Appeal Board (PTAB) determined that Fox had shown that the SRAM claims were prima facie obvious over the prior art, but secondary consideration existed that allowed SRAM to overcome the obviousness attack. The secondary considerations asserted by SRAM in defense of the patents were commercial success of a product, licensing, copying, praise by others and long-felt but unmet need.

Continue reading “The PTAB’s Erroneous Presumption”