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May 09, 2018
In Cisco Systems v. Hewlett Packard Enterprise Company, IPR2017-01933, Paper 9 (PTAB 2018) (Decision Denying Institution of Review), the Patent Trial and Appeal Board (“the Board”) held that a merger between Cisco and another company called Springboard that was completed after Cisco filed a petition for inter partes review (IPR) created a real party in...
April 23, 2018
Becton,  Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (Decision, Institution of Inter Partes Review) (Informative). Kayak Software Corp. v. IBM Corp., CBM2016-00075, Paper 16 (PTAB Dec. 15, 2016) (Decision, Declining to Institute Covered Business Method Patent Review) (Informational). In two decisions, designated as informative on March 21,...
April 03, 2018
Claim Validity Upheld Based on Showing of Lack of Motivation to Combine References Author: James A. Gromada In Resmed Limited et al. v. Fisher & Paykel Healthcare Limited, Case No. IPR2016-01724, the Patent Trial and Appeal Board (PTAB) was presented with a question as to whether several claims of U.S. Patent No. 8,453,641 B2 (hereinafter...
March 14, 2018
On February 23, 2018, the Patent Trial and Appeal Board (PTAB) issued two decisions regarding an inter partes review (IPR) of patents covering Allergan’s Restasis© (Cyclosporine ophthalmic emulsion) filed by Akorn Pharmaceuticals, Mylan Pharmaceuticals, and Teva Pharmaceuticals.  The first opinion denied the Saint Regis Mohawk Tribe’s Motion to Terminate the Proceedings, while the second denied...
March 09, 2018
Sughrue is pleased to announce the publication of THE ESSENTIAL CASE LAW GUIDE TO PTAB TRIALS, collectively authored by Sughrue partners and associates.  The Guide is the first comprehensive text on decisions of the U.S. Patent Office regarding the newest form of administrative law practice before that agency.  Through analysis and summary of the PTAB’s...
January 10, 2018
Wi-Fi One, LLC v. Broadcom Corp. (Fed. Cir. 2018) By David Emery In an en banc decision, the Federal Circuit reigned in the scope of 35 U.S.C. § 314(d) by deciding that time-bar determinations under  § 315(b) are appealable.  While § 314(d) states that a determination whether to institute is nonappealable, the Court limited this prohibition...
November 30, 2017
On November 27, 2017, the Supreme Court Justices posed many interesting questions to attorneys representing the parties involved in two underlying Inter Partes Reviews (IPRs) and the federal respondents in these two cases, which will impact the future of IPRs significantly.  Of the two cases, Oil States Energy Services v. Greene’s Energy Group (16-612) has...
October 25, 2017
General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha. (IPR2016-01357 through IPR2016-01361; “Decision”) In an expanded panel where General Plastics sought reversal of multiple decisions that denied instituting follow-on petitions, the PTAB confirmed these decisions were proper based on the factors established in NVIDIA.  This decision has been added to the PTAB’s list of precedential...
October 10, 2017
In Aqua Products, Inc., v. Matal, 2015-1177, Oct. 4, 2017, the en banc Federal Circuit cut against the grain of current PTAB proceeding and held that the petitioner in an inter partes review proceeding has the burden to prove unpatentability for amended claims. The patent owner in a patent office trial may file one motion...
September 01, 2017
Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co., Ltd. (Federal Circuit 2016-232, August 22, 2017) By David Emery In a concurring opinion by Judge Timothy Dyk (joined by Judge Wallach), Judge Dyk expressed that there are “serious questions as to the Board’s (and Director’s) interpretation of the relevant statutes and current practices” when expanding...