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.

Before Lourie, Reyna, and Taranto.  Appeal from the Patent Trial and Appeal Board.

Summary: A prima facie case of obviousness is established where the claimed range abuts a range disclosed in the prior art and there is no evidence of a meaningful distinction between the two ranges.

Before O’Malley, Plager and Taranto. Appeal from the U.S. District Court for the Northern District of California, Judge William H. Alsup.

Summary: Historical findings of fact relevant to copyright fair use can be resolved by a jury, but the district court must resolve all inferences drawn from those facts and the ultimate conclusion of fair use. 

Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board.

Summary: When resolving an obviousness challenge, the PTAB cannot invoke “ordinary creativity” of a skilled artisan to supply a missing claim limitation, without reasoned analysis and evidence.

On March 6, 2018, 23andMe, Inc. received the first-ever FDA authorization for a direct-to-consumer genetic test that analyzes gene mutations to help predict a subject’s risk of developing specific cancers. 23andMe already sells diagnostic kits by mail that determine a variety of gene profiles from a consumer.

Lundbeck Pharmaceutical Company, headquartered in Denmark, recently announced the acquisition of Prexton Therapeutics B.V. for $1.1 billion (U.S.)[1].  Lundbeck is a publicly traded company focusing on psychiatric and neurological disorders[2]. 

Before Moore, Reyna, and Taranto.  Appeal from the Patent Trial and Appeal Board.

Summary: A party in an inter partes review proceeding may not present new evidence or arguments at oral argument.     

The University of Minnesota (UMinn) and Toyota Motor Corp. (Toyota) co-own U.S. Patent 8,394,618 (the ’618 patent).  After Reactive Surfaces Ltd. filed a petition for IPR of the ’618 patent, UMinn and Toyota filed a motion to dismiss the petition based on UMinn’s sovereign immunity.  Reactive Surfaces Ltd., LLP, v. Toyota Motor Corp., IPR2016-01914, Paper 23 (PTAB March 3, 2017).  The Board granted the motion in part, dismissing UMinn from the proceedings, but continuing the IPR with Toyota.  Paper 36 (PTAB July 13, 2017).  [Link to Blog post from  July 20, 2017]  On March 1, 2018, the Board entered a Final Written Decision holding all instituted claims were unpatentable.  Paper 64 at 43 (PTAB March 1, 2018). 

Before Moor, Mayer, and Stoll.  Appeal from the patent Trial and Appeal Board

Summary: The broadest reasonable interpretation of a claim term cannot be so broad that it is inconsistent with the specification or renders the term meaningless.

In Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., the Federal Circuit held that user interface claims are patent eligible under 35 U.S.C. § 101 because they “recite a specific improvement over prior systems, resulting in an improved user interface for electronic devices.” Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018). The court determined that the claims are directed to “a particular manner of summarizing and presenting information in electronic devices” and that the claims do not “us[e] conventional user interface methods to display a generic index on a computer.” Id.