Tag Archives: Patent Trial And Appeal Board (PTAB)

PTAB Not Bound By Prior Court Decisions Upholding Exelon Patents

In Novartis v. Noven Pharmaceuticals, Inc., the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board (PTAB) decisions invalidating certain claims of two Orange Book-listed Exelon patents. This decision has garnered attention because the patents previously were upheld by the U.S. District Court for the District of Delaware in a decision that also was … Continue reading this entry

PTAB Holds Oral Hearings In Tecfidera Patent IPR and Interference

On November 30, 2016, the USPTO Patent Trial and Appeal Board (PTAB) held oral hearings in two different inter partes proceedings involving the Biogen Tecfidera® patent with the latest expiation date. First, it heard arguments in the Inter Partes Review (IPR) brought by Kyle Bass and the Coalition for Affordable Drugs, and then it heard … Continue reading this entry

USPTO Offers Small Entities One Streamlined Patent Appeal

In a September 15, 2015 Federal Register Notice, the USPTO announced a pilot program that will permit certain Small or Micro Entities to expedite a pending ex parte appeal. According to the Notice, the USPTO aims to decide petitions to be enrolled in the expedited patent appeal program within 2 months, and to render decisions in … Continue reading this entry

Federal Circuit Reverses Unreasonable PTAB Claim Construction, Upholds Idle Free Standard For Motions To Amend

The Federal Circuit decision in Microsoft Corp. v. Proxyconn, Inc., addressed several important issues relating to post-grant patent trials conducted by the USPTO Patent Trial and Appeal Board (PTAB), including the PTAB’s claim construction standard and the requirements for motions to amend the claims. The net result of the decision was to affirm-in-part, reverse-in-part, vacate-in-part and remand–which … Continue reading this entry

Federal Circuit Finds New Rationale Constituted New Ground Of Rejection On Appeal

A unanimous panel of the Federal Circuit has found that yet another decision by the USPTO Patent Trial and Appeal Board (PTAB) improperly made a new ground of rejection in “affirming” the examiner’s rejections. The court’s decision in In re Biedermann follows similar rulings in Rambus, Stepham, and Leithem, and raises questions as to whether the … Continue reading this entry

Federal Circuit Vacates PTAB Decision Invalidating Rambus Patent

In Rambus, Inc. v. Rea, the Federal Circuit found several legal and procedural errors in the decision of the USPTO Patent Trial and Appeal Board (PTAB) that invalidated certain claims of the Rambus patent as obvious. While the technology at issue goes beyond the scope of PharmaPatentsBlog, the decision makes several important points of general … Continue reading this entry

A Look At The USPTO Backlog Statistics

As the USPTO fiscal year comes to an end on September 30, I thought this would be a good time to review the USPTO backlog statistics. The currently available data reflects the backlogs as of the start of August 2013, and reveals a decrease in the backlog of unexamined applications, a slight decrease in the … Continue reading this entry

New Explanation By Patent Trial And Appeal Board Is Not A New Ground Of Rejection

In In re Adler, the Federal Circuit affirmed the decision of the Patent Trial and Appeal Board (PTAB) that upheld the Examiner’s determination that the claims at issue were obvious. In so doing, the court rejected Adler’s arguments that the PTAB decision was based on a new ground of rejection that would have entitled Adler … Continue reading this entry

A Quick Look At The First Patent Trial And Appeal Board Decision In a Covered Business Method Patent Proceeding, SAP America, Inc. v. Versata Development Group, Inc.

On June 11, 2013, the USPTO Patent Trial and Appeal Board (PTAB) issued its first final decision in a covered business method patent (CBM) proceeding, in SAP America, Inc. v. Versata Development Group, Inc. (CBM2012-00001). Although this case is not in the field of pharmaceuticals or biotechnology, a few aspects of this decision will be … Continue reading this entry