July 20, 2018Newsletter

This Week at the Board - July 20, 2018

Board Stays Reissue Because of Related IPR

In Stride Rite Children's Group, LLC v. Shoes by Firebug LLC (IPR2017-01810), the Board granted the Patent Owner’s motion to stay examination of a reissue application for the patent at issue in the IPR.  The claims pending in the reissue application included claims 1– 10 which were instituted in the IPR.  The reissue claims had not been examined, and no Office action had been entered.  The Board found that conducting the examination of the reissue application concurrently with the IPR “would needlessly duplicate efforts…and could potential result in inconsistencies between the two proceedings.”  The Board exercised is discretion to stay the related proceeding until completion of the IPR.

A link to the decision is found here.


Fed. Cir. Reverses PTAB’s Decision to Invalidate Hair Curler Patent

In TF3 Limited v. Tre Milano, LLC., the Fed. Cir. concluded that the Board erred in finding that the claims of U.S. Patent No. 8,651,118 were anticipated, based on the erroneous construction of two claim terms.  The Fed. Cir. determined that the claims were not the same as what was shown in the prior art devices, and that “[a]nticipation was decided on a flawed analysis, whereby the ’118 Patent claims were construed to have a breadth beyond the scope supported by the device described in the ’118 Patent.”  The Fed. Cir. found that in construing the claims, the Board broadened the claim scope to “include subject matter contrary to the description of the specification” and that under a proper construction there was no anticipation. The Board’s decision was reversed without remand.

A link to the decision is found here.


Fed. Cir. Upholds IPRs Invalidating Seven Jazz Pharmaceutical Patents

In Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC., the Fed. Cir. upheld seven IPR decisions determining that claims directed to a drug distribution and tracking system were invalid for obviousness.  Jazz’s drug Xyrem is used to treat symptoms associated with narcolepsy and contains GHB which can be illicitly used as a “date-rape drug.”  During the regulatory review process for Xyrem, the FDA held an advisory committee meeting that was open to the public.  The Board’s obviousness determinations relied on the material published before and after the meeting by the advisory committee.  Jazz argued in the appeal that this material was not sufficiently accessible to the public to constitute prior art.  The Fed. Cir. found that the Notice in the Federal Register for the advisory committee was widely disseminated and provided a hyperlink for the materials through a public FDA website.  The Fed. Cir. agreed with the Board that a person of ordinary skill “would have been familiar with the Federal Register and motivated to look for notices related to drug distribution, safety, or abuse prevention,” and noted that the materials “were available online for a substantial time before the critical date of the patents in suits.” The Fed. Cir. also noted that the materials were distributed via public domain sources with no expectation that they remain confidential or not be copied.  Because the materials were prior art publications, the Board’s decisions were affirmed.

A link to the decision is found here.

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