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General Electric Company (GE) v. United Technologies Corporation (UTC) Docket No. 2017-2497 (IPR2016-00531) REYNA, TARANTO, HUGHES July 10, 2019 Brief Summary: GE appealed Board IPR finding claims 7-11 of UTC’s US 8,511,605 relating to gear fan gas turbine engines not invalid for obviousness (UTC disclaimed claims 1 and 2 which were challenged for anticipation). On Dec. 29, 2017, UTC argued that GE lacked standing to appeal the Board decision “because it failed to demonstrate a sufficient injury in fact”. GE argued in the “First Long Declaration” “that the ‘605 patent impedes its ability to use its 1970s geared-fan engine design…and…
Samsung Electronics Co., Ltd. v. Infobridge PTE. Ltd. Docket Nos. 2018-2007, -2012 (IPR2017-00099, -00100) Newman, Schall, O’Malley July 12, 2019 Brief Summary: Board IPR decisions based on no public accessibility vacated and remanded (e.g., “a petitioner need not establish that specific persons actually accessed or received a work to show” accessibility). Summary: Samsung appealed two Board IPR decisions finding that it failed to show that the prior art cited against Infobridge’s US 8,917,772 related to encoding and decoding data was publicly accessible before the ‘772 patent critical date. The “WD4 reference” (Working Draft 4 of the H.265 standard), cited by…
Invidior Inc. et al. v. Dr. Reddy’s Labs. (DRL), Actavis/Watson, Teva, Par, Intelgenx, Alvogen Pine Brook, LLC Docket Nos. 2017-2587, 2018-1010, -1058, -1062, -1114, -1115, -1176, -1177 Newman, Mayer (D), Lourie July 12, 2019 Brief Summary: DC findings that Invidior patents relating to its Suboxone® sublingual film are infringed by certain parties and not invalid for obviousness affirmed. Summary: DRL et al. appealed several DC decisions regarding exclusive licensee (from Aquestive Ther., Inc.) Invidior’s US 8,603,514; 8,900,497; and 8,017,150; relating to Invidior’s Suboxone® sublingual film (combination of the opioid buprenorphine and the opioid antagonist naloxone; previously sold as a tablet;…
Stephen Quake, et al. v. Yuk-Ming Dennis Lo, et al. Docket Nos. 2018-1779, -1780, -1782 Reyna, Chen, Hughes July 10, 2019 Brief Summary: Board finding of no WD of chromosomal abnormality testing claims affirmed. Summary: Quake appealed Board decision finding four claims to methods for identifying chromosomal abnormalities (fetal aneuploidy) using “random” massively parallel sequencing of DNA in cell-free fetal DNA (cff-DNA) (“meaning that all of the DNA in a sample is sequenced, as opposed to sequencing specific, targeted sequences”) invalid for lack of written description (WD, section 112). Quake’s US 8,008,018 is involved in an interference with Lo’s applications…
In re: Global IP Holdings, LLC Docket Nos. 2018-1426 Moore, Reyna, Stoll July 5, 2019 Brief Summary: Board decision affirming rejection of broadening reissue claims for lacking written description vacated and remanded (e.g., Board’s statement “that the ‘233 patent’s specification was insufficient ‘regardless of the predictability of results…” conflicts with Ariad). Summary: Global IP appealed the Board’s decision affirming the examiner’s rejection of its broadening reissue claims of its US 8,690,233 directed to automotive vehicle load floors for lacking written description (pre-AIA section 112, first paragraph (“WD”)). Global IP sought to amend its claims from reciting “thermoplastic skins” and “thermoplastic…
Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc. et al. (Becton Dickinson (BD), GeneOhm, Aboott) Docket Nos. 2017-2498, -2499, -2545, -2546 (public opinion: July 25, 2019) Brief Summary:  DC grant of SJ for invalidity of Enzo’s claims for lack of enablement affirmed (e.g., “almost no limitations on the structure of the claimed polynucleotide”, “the art was highly unpredictable”). Summary:  Enzo appealed DC grant of SJ for invalidity of Enzo’s US 6,992,180 (directed to oligonucleotides) and US 8,097,405 (directed to in situ and liquid hybridization) for lack of enablement (section 112, first paragraph).  The FC panel opinion explains that this…
Athena Diagnostics, Inc. et al. v. Mayo Collaborative Services, LLC Docket No. 2017-2508 NEWMAN (D), LOURIE, STOLL February 6, 2019 (Petition for rehearing denied July 3, 2019) Update (July 3, 2019): Athena’s petition for rehearing regarding the invalidation under § 101 of its antibody-disorder “correlation” claims denied. Selected excerpts from concurrences and dissents: “The only unconventional aspect is the inventors’ discovery of what the Supreme Court would call the natural law—the correlation between MuSK autoantibodies and the neurological disorder myasthenia gravis—but we cannot premise eligibility solely on the natural law’s novelty.” “The multiple concurring and dissenting opinions regarding the denial…
Kolcraft Enterprises, Inc. v. Graco Children’s Products, Inc. Docket No. 2018-1259-60 (IPR2016-00816, -00826) MOORE, REYNA, CHEN July 2, 2019 Brief summary:  Board IPR decision of invalidity of Kolcraft’s design patents affirmed as evidence regarding inventor’s date of conception was uncorroborated. Summary:  Kolcraft appealed PTAB (“Board”) IPR decision finding Kolcraft’s design patents D604,970 and D616,231, each entitled “Exposed Legs for a Play Yard” (e.g., playpens), unpatentable as obvious.  Graco successfully argued for unpatentability in view of D494,393 (“Chen”).  In this appeal, Kolcraft did not contest that, if “Chen ‘393 is prior art, then the ‘970 and ‘231 patents are obvious.”  Kolcraft…
Cellspin Soft, Inc. v. Fitbit, Inc. et al. (Moov, Nike, Fossil, Canon, GoPro, Panasonic, and JKI); Docket Nos. 2018-1817-26, -2178-84 (June 25, 2019) Brief Summary:  DC grant of Fitbit’s motion to dismiss for patent ineligibility under section 101 and the award of attorney’s fees vacated and remanded (Cellspin’s complaint alleged an inventive concept under Alice/Mayo’s step two, DC erroneously concluded “that issued patents are presumed valid but not presumed patent eligible”). DC granted motion to dismiss under section 101 of Cellspin’s patents directed to automated publishing of content onto websites FC panel found DC erred since “patentees who adequately allege…
UCB, Inc. et al. v. Watson Laboratories, Inc. et al. Docket No. 2018-1397, -1453 TARANTO, SCHALL, CHEN June 24, 2019 Brief summary: DC decisions finding that UCB’s ‘434 patent was infringed under DOE and not invalid and UCB’s ‘414 patent invalid for anticipation affirmed: – DC decision that UCB’s OB-listed ‘434 patent is infringed and valid affirmed (NDA N021829 for Neupro®; DC “had adequate reasons for why a skilled would understand that polyisobutylene, specifically, would work just as well as acrylate or silicone for the claimed transdermal patch”; prior art provided “more of a list of thousands of possibilities out…
Mayne Pharma Int. v. Merck Sharpe & Dohme (MSD) (USPTO as intervenor) Docket No. 2018-1593 (IPR2016-01186) LOURIE, DYK, O’MALLEY June 21, 2019 Brief summary: Board IPR time bar and claim construction/invalidity determinations affirmed. Summary: Mayne appealed the USPTO’s (Board’s) IPR final written decision (FWD) concluding that claims 2, 6 and 9-14 of US 6,881,745 relating to compositions of “about 100 mg of an azole antifungal drug” (that are practically insoluble in aqueous media) and “one or more polymer[s] having acidic functional groups…wherein in vivo the composition provides a mean Cmax of at least 100 ng/ml” (or at least 800 ng/ml)…
Samsung Electronics Co., Ltd. v. UUSI, LLC, DBA NARTRON Docket No. 2018-1310 (IPR2016-00908) NEWMAN, LOURIE, DYK June 18, 2019 Non-precedential Brief summary: IPR obviousness decision vacated and remanded (e.g., “improve similar devices in the same way, using the technique is obvious” (KSR), “a reasonable expectation of achieving what is claimed” (Int. Bio-Sys., FC 2016)). Summary: Samsung appealed Board IPR final written decision (FWD) that Samsung did not show UUSI’s US 5,796,183 related to “capacitive responsive electronic switching circuits” using touchpads to be obvious in view of the combination of three prior art US patents (Gerpheide, Ingraham, and Caldwell, as well…
Power Integrations, Inc. v. Semiconductor Components Industries, LLC (“Fairchild”) Docket Nos. 2018-1607 (IPR2016-00809) PROST, REYNA, STOLL June 13, 2019 Brief summary: IPR was time barred under §315(b) “because Fairchild was an RPI at the time the IPR was instituted, even though it was not an RPI at the time the petition was filed” (merger closed post-filing), and therefore vacated and remanded the Board’s FWD. Summary: PI appealed Board IPR decision that SCI’s petition for IPR was not time-barred under 315(b) and finding the challenged claims of PI’s US 6,212,079 relating to “switched mode power supplies” invalid. The FC panel opinion…
Forum US, Inc. v. Flow Valve, LLC et al. (FC Docket No. 2018-1765; June 17, 2019) ~ Forum filed DJ action, DC granted SJ to Forum for lack of WD, FV appealed ~ U.S. 8,215,213 relates “to supporting assemblies” (“arbors”) “for holding a workpiece” ~ Reissued as RE45,878 with seven new claims including “arbor-less embodiment”; FV argued skilled artisan would understand from specification that arbors are optional (including expert declaration) ~ FC panel explained that “for broadening reissue claims,” it is not enough “that an invention…was suggested or indicated in the specification” (Indus. Chem., US 1934; Corbin, US 1893; Antares,…
Regents of the Univ. of Minnesota v. LSI Corp. et al. (Gilead Sci. Inc., intervenor) Docket Nos. 2018-1560-65 (IPR2017-01068, -01186, -01197, -01200, -01213, -01214, -0129) DYK, WALLACH, HUGHES June 14, 2019 Brief summary: FC panel concluded “that state sovereign immunity does not apply to IPR proceedings”. Summary: UMN appealed Board refusal to dismiss multiple IPR petitions “alleged to be improper because states supposedly enjoy sovereign immunity in IPR proceddings.” The IPRs relate to six of UMN’s patents relating to particular types of telecommunications chips. UMN sued LSI And Ericsson for infringement and each separately petitioned for IPR, alleging unpatentability for…
Dr. Falk Pharma GmbH v. Generico, LLC et al., Salix Pharm. v. Mylan Pharm. Docket 2017-2312 (IPR2016-00297, -01386, -01409); 2017-2636, 2018-1320 LOURIE, LINN, WALLACH June 12, 2019 Non-precedential Brief summary: Board’s IPR obviousness determination affirmed and Salix’s appeal of DC holding of non-infringement dismissed as moot. Summary: Dr. Falk and exclusive licensee Salix appealed Board IPR obviousness decision and DC holding of non-infringement of US 8,865,688 directed to “[a] method for maintaining the remission of ulcerative colitis” using a “granulated mesalamine formulation”, administered without food or antacids, where “remission is defined as a” Sutherland Disease Activity Index1 (DAI) “score of…