Federal Circuit Reaffirms the Board’s Decision to Terminate a Reexamination As to Only Litigated Claims in a Civil Action

IN RE AFFINITY LABS OF TEXAS, LLC: May 5, 2017. Before Taranto, Chen, Stoll. Takeaway: The estoppel provision under 35 U.S.C. 317(b) does not extend to all parties and all claims, but rather only to an inter partes requester that was a party to the civil action (or its privies) …

Federal Circuit Affirms the PTAB’s Decision Finding the Patent Claims Unpatentable as Obvious Where the Patent Owner Did Not Demonstrate that the Board Violated the Administrative Procedure Act Requirements of Notice and an Opportunity to Respond

NOVARTIS AG, MITSUBISHI PHARMA CORP., v. TORRENT PHARM. LTD.:  April 12, 2017. Before Taranto, Chen, and Stoll. (precedential). Takeaways: The Patent Trial and Appeal Board did not violate the requirements of notice and an opportunity to respond found in the Administrative Procedure Act when it relied on a prior art …

When the Examiner Agrees With an Attorney’s Argument Presented in an Inter Partes Reexamination, But Cites to No Substantial Evidence, There is no Factual Basis for the Examiner’s Finding That Patent Claims are Unpatentable as Being

Icon Health v. Strava, (2016-1475) February 27, 2017.  Before Judges O’Malley (concurring-in part and dissenting-in-part), Reyna, and Wallach. Takeaway: In order to withstand a challenge on appeal, a determination by the PTAB that the claims of a patent would have been obvious must be supported by substantial evidence, and be …

Patent Claiming Antidote for Acetaminophen Overdoses Not Invalid as Either Derived From Another or Obvious Over the Prior Art

CUMBERLAND PHARMS. INC. v. MYLAN INSTITUTIONAL LLC:  Jan. 26, 2017.   Before Moore, Reyna, and Taranto. Takeaway: To prove that a claimed invention was derived from another, a defendant must show that the specific invention was previously conceived by someone else and then communicated to the named inventor. There is no …

District Court Correctly Analyzed Likelihood of Success and Irreparable Harm Elements When Granting Preliminary Injunction

TINNUS ENTERPRISES, LLC V. TELLEBRANDS CORP.: Jan. 24, 2017.  Before Moore, Wallach, and Stoll. Takeaway: Instruction manuals that teach a claim element can be used as circumstantial evidence of a customer’s direct infringement. Claim terms are not indefinite when the claims themselves provide parameters for determining whether the disputed limitation …