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10.22.24
The PTAB Review - October 2024
The PTAB Review begins by exploring collateral estoppel from unpatentability determinations in inter partes review (IPR) proceedings. Next, it summarizes recent developments at the U.S. Patent and Trademark Office relevant to IPRs and other PTAB proceedings. Finally, it reviews a recent Federal Circuit decision addressing expert qualifications as relevant to PTAB proceedings.
Newsletters
8.21.24
The PTAB Review - August 2024
This issue of The PTAB Review begins by providing an analysis of how institution decisions consider declaration testimony submitted by a patent owner. Next, it summarizes proposed rulemaking from the United States Patent and Trademark Office (USPTO) about practices at the PTAB, including discretionary denial of institution. Third, it summarizes a USPTO decision providing guidance for patenting antibodies using means-plus-function claims. Finally, it reviews a recent precedential Federal Circuit decision cautioning against an overly rigid approach to obviousness.
Alerts
7.01.24
U.S. Supreme Court Administrative Law Decisions Raise Questions for U.S. Patent and Trademark Office Proceedings
Last week, the U.S. Supreme Court decided two important administrative law cases that are expected to increase judicial authority over agency adjudications and rulemaking. In Securities & Exchange Commission v. Jarkesy (decided June 27), the Court held that when the U.S. Securities and Exchange Commission (SEC) seeks civil penalties for securities fraud, the defendant is entitled to a jury trial. In Loper Bright Enterprises v. Raimondo (decided June 28), the Court held that courts should not defer to an agency statutory interpretation. While each ruling might have significant effects on some agencies, their effect on the United States Patent and Trademark Office (USPTO) should be much more limited because, generally, USPTO regulatory authorities are much more limited and because USPTO’s primary reviewing court, the U.S. Court of Appeals for the Federal Circuit, is a specialized court that does not defer to USPTO on legal questions.
Newsletters
4.08.24
The PTAB Review - April 2024
This issue begins by summarizing a recent Patent Trial and Appeal Board (PTAB) decision strictly applying the public availability standard for prior art references as a basis for denying institution. Next, we examine a recent appellate decision addressing the ability of a joinder petitioner to oppose a motion to amend that the primary petitioner elects not to oppose. Third, we consider prohibitions against incorporation by reference at the Federal Circuit and at the PTAB. Finally, we summarize recent United States Patent and Trademark Office formal guidance regarding the legal standards for determining obviousness.
Newsletters
1.22.24
2023 PTAB Year in Review
Wilson Sonsini Goodrich & Rosati is pleased to present our 2023 PTAB Year in Review. We begin with a review of 2023 petition filings and outcomes at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. We then provide a summary of notable developments at the PTAB, including recent precedential and director review decisions. Next, we explore several appellate decisions relevant to PTAB trials. After that, we examine potential trends regarding motions to exclude and secondary considerations. Finally, we provide an update on discretionary denials of institution for parallel litigation.
Client Highlights
8.18.23
Firm Secures Federal Circuit Affirmance of PTAB Victory for Palette Life Sciences
On August 16, 2023, the U.S. Court of Appeals for the Federal Circuit affirmed a Wilson Sonsini Goodrich & Rosati victory for Palette Life Sciences, Inc. against two medical-device patents. Palette provides injectable, biodegradable spacers for protecting non-target organs from radiation treatments. Wilson Sonsini successfully challenged the two broad Incept LLC patents at the Patent Trial and Appeal Board (PTAB) on both anticipation and obviousness grounds. Incept appealed both decisions, challenging the anticipation and obviousness analyses, including arguments on teaching away and commercial success. At the Federal Circuit, Judge Schall (joined by Judge Taranto) affirmed the PTAB’s decisions, with a partial dissent from Judge Newman, who would have remanded some of the claims for further consideration by the PTAB. With this win, more cancer patients will have access to this important protective technology.
Wilson Sonsini partner T.O. Kong argued the case at the PTAB and the Federal Circuit, with support from Tasha Thomas, Lori Westin, Rick Torczon, Kathryn Robinson, and Robyn Moriarty.
Wilson Sonsini partner T.O. Kong argued the case at the PTAB and the Federal Circuit, with support from Tasha Thomas, Lori Westin, Rick Torczon, Kathryn Robinson, and Robyn Moriarty.
Newsletters
5.19.23
The PTAB Review - May 2023
This issue begins with a summary of several Patent Trial and Appeal Board (PTAB) policy questions the U.S. Patent and Trademark Office (USPTO) has raised in an advance notice of proposed rulemaking. Next, we examine two recent appellate decisions. One is a Federal Circuit decision addressing the scope of inter partes review (IPR) estoppel and the allocation of the burden of proving whether IPR estoppel applies in a given circumstance. The second is a Federal Circuit decision addressing the requirement for showing written description support of a negative claim limitation, on which the U.S. Supreme Court recently denied review. Also, we examine several decisions addressing the requirement when proving obviousness to establish a rationale that would cause a person of ordinary skill in the art to combine prior art elements in a manner that satisfies the challenged claim as a whole. Finally, we briefly summarize the Supreme Court’s May 18, 2023, decision addressing enablement of antibody genus claims in Amgen Inc. v. Sanofi.
Newsletters
1.23.23
2022 PTAB Year in Review
Wilson Sonsini Goodrich & Rosati is pleased to present our 2022 PTAB Year in Review.
We begin with a review of 2022 petition filings and outcomes at the Patent Trial and Appeal Board (PTAB), and examine the effect of the decrease in discretionary denials on case institutions. We then provide a summary of notable developments at the PTAB, including recent precedential and director review decisions, and explore important appellate decisions relating to PTAB trials. Finally, we provide an analysis of PTAB merits rationales for denying institution.
Newsletters
10.10.22
The PTAB Review - October 2022
This issue of The PTAB Review begins with a brief update about the U.S. Patent & Trademark Office (USPTO) Guidelines for when institution of an America Invents Act (AIA) trial (e.g., inter partes review or post-grant review) should be denied based on the status of a parallel litigation. Next, we examine USPTO Director Kathi Vidal’s exercise of her supervisory authority over PTAB trial decisions. From there, we provide a summary of several recent Federal Circuit cases addressing AIA trials. Finally, we summarize the USPTO’s recent requests for comments and proposed rulemaking relevant to AIA trials.
Alerts
6.29.22
Negative Claim Elements and the Importance of Complete Patent Disclosures: How Novartis Lost a $2.8 Billion Drug to Generic Drug Makers
On June 21, 2022, Novartis Pharmaceuticals Corp.'s patent for a method of treating multiple sclerosis with fingolimod (Gilenya®) was held invalid for lack of written description under 35 U.S.C. § 112(a).1 Gilenya® was Novartis' third bestselling pharmaceutical drug in 2021, and represented a total revenue for the company of about $2.8B globally.2 The decision is a win for the generic drug makers engaged in the instant Hatch-Waxman litigation with Novartis, and will likely result in hundreds of millions of dollars in lost revenue for Novartis when the other patents listed in the Orange Book for this product expire in 2026.
Newsletters
6.22.22
The PTAB Review - June 2022
This issue of The PTAB Review begins with two brief updates about the power of the Patent Office Director to review Patent Trial and Appeal Board (PTAB) decisions. Next, we examine a special circumstance under which a patent can be challenged simultaneously in two different PTAB trials. Finally, we conclude by describing some recent PTAB cases addressing “public availability” of printed publication prior art.
Newsletters
3.11.22
The PTAB Review - March 2022
This issue of The PTAB Review begins by examining a recent Federal Circuit decision that expands the scope of inter partes review (IPR) estoppel to encompass printed publication prior art the petitioner knew about when filing a first petition, even when the PTAB and the parties decided to exclude those references from the instituted IPR. Next, we examine another recent Federal Circuit decision that confirms that applicant-admitted prior art (AAPA) cannot itself form the basis for an IPR ground in lieu of printed publication prior art. Finally, we conclude by discussing Judge Leonard Stark, who will become the newest Federal Circuit judge later this month.