GILBERT P. HYATT v. UNITED STATES PATENT AND TRADEMARK OFFICE

Before Moore, Prost, and Hughes. Appeal from the District Court for the Eastern District of Virginia

Summary: For a patent application filed but not yet granted before the Uruguay Rounds Agreement Act (which changed patent terms to be 20 years from the effective filing date instead of 17 years from the grant date), a patentee’s failure to disclose species-altering amendments for decades triggered the applicant-action exception. Therefore, the Examiner was within his authority to impose a restriction requirement under that exception.

The Federal Circuit has affirmed that Eagle Pharmaceuticals, Inc. did not infringe Par Pharmaceutical, Inc. patents, easing Eagle’s path to market a generic competitor to Par’s Vasostrict®

BEST MEDICAL INTERNATIONAL, INC. v. ELEKTA INC.

Before Hughes, Linn, and Stoll. Appeal from the Patent Trial and Appeal Board.

Summary: Expert testimony was properly discounted when substantial evidence supported the Board’s finding that a POSA would have possessed experience that the expert was missing; there is no standing to appeal a claim’s unpatentability determination from an IPR when the claim is finally canceled during parallel ex parte re-examination prior to appealing the IPR determination.

Teleflex announced on August 22, 2022 that it has reached an agreement to acquire Standard Bariatrics. Teleflex agreed to acquire Standard Bariatrics for a cash payment of $170 million at closing and could pay up to an additional $130M if Standard Bariatrics reaches certain commercial milestones.

IN RE KILLIAN

Before Taranto, Clevenger, and Chen. Appeal from the Patent Trial and Appeal Board.

Summary: Section 101 jurisprudence is still sound post-Dobbs. 

Boston Scientific announced on August 15, 2022, that it acquired Obsidio, Inc. for an undisclosed fee. Obsidio has technology called the Gel Embolic Material (GEM™), which is used in minimally invasive blood vessel embolization. According to its press release, Boston Scientific intends to expand its interventional oncology and embolization portfolios.

PAR PHARMACEUTICAL, INC. V. EAGLE PHARMACETICALS, INC.

Before Moore, Prost, and Hughes. Appeal from the United States District Court for the District of Delaware.

Summary: An ANDA was held not to infringe asserted claims because the ANDA specifies pH ranges that fall outside of those recited in the asserted claims.

IN RE: PALO ALTO NETWORKS, INC.

Before Dyk, Reyna, and Chen.

Summary: The USPTO policy of refusing to consider Requests for Director Rehearing of decisions denying institution of IPR and PGR does not violate the Appointments Clause of the Constitution.

CLICK-TO-CALL TECHNOLOGIES LP V. INGENIO, INC., DBA KEEN, ETHER, THRYV, INC.

Before Stoll, Schall, and Cunningham. Appeal from the United States District Court for the Western District of Texas.

Summary:  Ingenio’s IPR petition was partially instituted before SAS (overruling the practice of partial institutions), and a final written decision was issued after SAS.  IPR estoppel applied to a claim that was not addressed in a final written decision because the invalidity ground reasonably could have been brought, and petitioner chose not to seek remand in view of SAS.

LSI CORPORATION v. REGENTS OF THE UNIVERSITY OF MINNESOTA

Before Dyk, Reyna, and Hughes. Appeal from the Patent Trial and Appeal Board.

Summary: Determining whether a patent or application’s disclosure is “by another” under § 102(e) requires evaluating the relied-upon portions of the disclosure to determine if the source of this disclosure is truly “by another;” a Board’s determination of untimeliness must be appealed even if the Board reaches the merits of the argument.