PTAB Denies Challenge Of Abbvie Humira Patents

The USPTO Patent Trial and Appeal Board (PTAB) denied institution of two Inter Partes Review challenges brought by Amgen, Inc. against two Humira patents covering stable formulations of anti-human Tumor Necrosis Factor alpha antibodies. The PTAB decisions illustrate the potential importance of establishing unpredictability in the field when defending against obviousness challenges. Continue reading this entry

PTAB Trial Standard Of Review Requires Affirmance Despite Contrary Evidence

In Merck & Cie v. Gnosis S.p.A., the Federal Circuit affirmed the decision of the USPTO Patent Trial and Appeal Board (PTAB) that held the challenged claims obvious in an Inter Partes Review (IPR) proceeding. Although the court recognized evidence that undermined the obviousness finding and acknowledged objective evidence of nonobviousness, the court determined that the PTAB’s factual findings were adequately supported by substantial evidence, such that the decision should be affirmed. In her dissent, Judge Newman questions whether that is the correct standard of review for a PTAB trial decision. Continue reading this entry

Losing Competing Property Not A Teaching Away

In In re Urbanski, the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (PTAB) finding the claims of Urbanski’s patent application obvious. Urbanski had argued that the cited references taught away from their combination, but the court agreed with the PTAB that someone skilled in the art would have been motivated to modify the method of the primary reference in accordance with the teachings of the secondary reference, even if that meant sacrificing the benefit of the primary reference. Continue reading this entry

Share Your Patent Quality Pet Peeves

The USPTO is inviting stakeholders to suggest topics for patent quality case studies. As explained in the December 21, 2015 Federal Register Notice, “the USPTO performs case studies to investigate specific quality-related issues,” such as the quality of “first Office actions on the merits.” Based on the results of a case study, the USPTO may “take action to remediate quality issues or to formulate best practices to further enhance quality.” Now, “[t]he USPTO … seeks to leverage the experience of its stakeholders to expand the use of case studies to additional quality-related topics.” Continue reading this entry

Did The PTAB Dose The AIA Poison Pill Incorrectly Against Premium Genetics?

In Inguran, LLC v. Premium Genetics (UK) Ltd., the USPTO Patent Trial and Appeal Board (PTAB) instituted Post Grant Review (PGR) proceedings in a patent granted from an AIA transition application based on its finding that at least one of the claims was not entitled to an effective filing date before March 16, 2013. While that aspect of the institution decision makes it interesting enough, I am not confident that the PTAB correctly applied 35 USC §§ 100 (i), 100 (j), and 102(A)(1) in its grounds for institution against claim 1. Continue reading this entry