Before Moore, Linn, and Chen. Appeal from the Patent Trial and Appeal Board.
Summary: A party seeking to swear behind prior art using an inventor’s testimony must proffer corroborating evidence that does not depend solely on the inventor’s testimony itself.
Before Moore, Mayer, and Stoll. Appeal from the United States District Court for the District of New Jersey.
Summary: Plain claim language will not be narrowed based on a patent’s specification unless the patentee clearly and explicitly disclaims claim scope.
Before Prost, Lourie and Hughes. Appeal from the United States District Court for the District of Delaware.
Summary: When another patent for a drug issues after an ANDA is filed, there can still be jurisdiction for an infringement lawsuit and a finding of infringement of that patent even when the ANDA is not amended until after the lawsuit is filed.
In Solutran, Inc. v. U.S. Bancorp & Elavon, Inc., No. 13:cv-02637, 2018 WL 1276999 (D. Minn. Mar. 12, 2018), the court denied the plaintiff’s Motion in Limine and held that CBM estoppel does not apply to related applications where the reference provides new disclosures or features that could not have been argued from the parent.
The court in Koninklijke Philips N.V. v. Wangs All. Corp., No. 14:cv-12298, 2018 WL 283893 (D. Mass. Jan. 2, 2018) denied summary judgement of no invalidity, finding that the Federal Circuit’s holding in Shaw forecloses a broad reading of the estoppel provisions under 35 U.S.C. §315(e)(1) & (2).
On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8); and Kayak Software Corp. v. IBM Corp., CBM2016-00075 (PTAB Dec. 15, 2016) (Paper 16). These Informative Decisions are based on the AIA statutory provision of 35 U.S.C. § 325(d), which permits the PTAB to deny institution of petitions that present grounds of unpatentability based on prior art that had been previously presented to the Office.
In an IPR on remand from the Federal Circuit on appeal of a motion to amend, the PTAB considered the scope of briefings of the parties in view of the Federal Circuit’s recent en banc decision Aqua Products v. Matal. The PTAB ordered that the remand be limited to the Federal Circuit’s remand instructions on reevaluating the original PTAB decision, without reconsidering all issues overturned in Aqua Products.
On April 2, 2018, Irish biotech Alkermes revealed that it had received a Refusal-to-File letter from the FDA regarding its depression drug ALKS 5461. The announcement caused Alkermes shares to drop 22.4%, and adversely affected the performance of biotech stocks and exchange-traded funds on Monday.[1]
Before Newman, Clevenger, and Wallach. Appeal from the Patent Trial and Appeal Board.
Summary: The USPTO has standing to intervene to defend its decision, even when the requestor has withdrawn.
The PTAB ruled that the Saint Regis Mohawk Tribe could not assert sovereign immunity in IPRs of patents that Allergan had assigned to the Tribe relating to Restasis®. See The Saint Regis Mohawk Tribe is not entitled to Sovereign Immunity at the PTAB. Following the PTAB’s dismissal of the Tribe’s sovereign immunity defense, the Tribe filed a notice of appeal and request to the PTAB to stay the IPR proceedings. IPR2016-01127, Paper 134 (PTAB March 8, 2018). The Tribe argued that its appeal divested the PTAB of jurisdiction. Id. at 3-7. The PTAB denied the Tribe’s motion to stay and stated that the Tribe’s interlocutory appeal does not divest the PTAB of jurisdiction, because the IPR proceedings can proceed against Allergan alone. IPR2016-01127, Paper 137 at 4 (PTAB March 22, 2018). The Tribe then filed a motion with the Federal Circuit to stay the IPR proceedings.
