The PTAB denied Apple’s motion to withdraw both its IPR petition and concurrent motion for joinder to prevent  Apple from circumventing potential estoppel ramifications in Apple Inc. v. Papst Licensing GmbH & Co. KG, IPR2017-00670, Paper 11 (P.T.A.B. May 22, 2017).

The Federal Circuit vacated and remanded the PTAB’s final written decision holding that claims directed to steel making methods were obvious in Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, No. 2016-2233 (Fed. Cir. May 11, 2017).

The Federal Circuit held that statements made by a patent owner in an IPR, whether before or after institution, can be considered during claim construction in district court litigation and relied upon to support a finding of prosecution disclaimer in Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017).

On May 17, 2017, Vertex Pharmaceuticals small molecule drug Kalydeco® (ivacaftor) was approved by the U.S. Food and Drug Administration (FDA) for use in treating an expanded population of cystic fibrosis patients with particular genotypes. The approval is notable for the agency’s use of laboratory-based in vitro assay data in reaching its decision to expand the drug’s indication.  

The PTAB issued a Final Written Decision in Coherus BioSciences Inc. v. AbbVie Biotechnology Ltd., IPR2016-00172 (P.T.A.B. May 16, 2017) finding claims 1-5 of U.S. Patent No. 8,889,135 (“the ‘135 patent”) unpatentable.

The Federal Circuit recently held in RecogniCorp, LLC v. Nintendo Co., Ltd. (Fed. Cir. 2016) that claims directed to encoding and decoding image data were not patent-eligible under 35 U.S.C. § 101. This ruling further highlights the evolving analysis of patent eligibility in the post-Alice era.

In Ex Parte Hafner, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (the “Board”) reversed the Examiner’s rejection that claims directed to an energy transaction plan were subject-matter ineligible.  Ex parte Hafner et al., No. 2015-002200 (P.T.A.B. Jan. 31, 2017).  This decision provides guidance for navigating the changing landscape of software patents in a post-Alice era. 

The PTAB granted joinder of a time-barred petitioner to an IPR trial after the patent owner settled its dispute with the original petitioner in AT&T Services, Inc. v. Convergent Media Solutions, LLC, IPR2017-01237, Paper 10 (P.T.A.B. May 10, 2017).

A magistrate judge in the Eastern District of Texas recommended in Biscotti, Inc. v. Microsoft Corp., No. 2:13-CV-01015, DI 191 (E.D. Tex. May 11, 2017) that Microsoft should be estopped from asserting invalidity grounds that Microsoft raised or reasonably could have raised during IPR proceedings.

In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company brochures as prior art in a follow-on IPR petition.  The PTAB held that at the time of JM’s earlier IPR petition, the brochures would not have been found by a reasonably skilled searcher conducting a diligent search.