Author:
Richard D. Kelly
October 1, 2026
The recent ARP (Appeal Review Panel) decision in ex Parte Baurin reversed a PTAB decision reversing the examiner’s final rejection of application 17/135,529 (‘529) on the grounds of obvious type double patenting (OTDP). The examiner’s OTDP rejection relied solely on the concept of harassment if the ownership of a patent issuing on ‘529 was different from for the reference patents. The examiner rejected the ‘529 application over five patents and one pending application (a patent thicket) on OTDP even though there was no extension of the monopoly period of the references relying on the M.P.E.P. and PTO guidance documents for the concept of harassment as the sole basis for the rejection. The PTAB rebutted these arguments in its decision denying the examiner’s request for reconsideration. The PTAB did not find any case law supporting the concept that the possibility of dual ownership alone was sufficient to support a double patent infringement rejection but did cite Gilead Sciences, Inc. v. Natco Pharma Ltd, 753 F.3d 1208 at 214 (Fed. Cir. 2014) where the Court found that a later filed and earlier expiring patent made the earlier filed and later expiring patent invalid for double patenting:<... Read more
Author:
Richard D. Kelly
June 9, 2026
The U.S. Supreme Court issued a unanimous decision on June 4, 2026, in Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., tightening the standard for alleging induced patent infringement in the context of generic drug “skinny labels.”<... Read more
Author:
Derek Lightner, Ph.D.
December 19, 2025
An obviousness rejection was recently reversed by the Patent Trial and Appeal Board (PTAB) by the panel of Administrative Patent Judges (APJs) authored by Debra L. Dennett, and further including Jeffrey W. Abraham and Avelyn M. Ross in U.S. Appl. No. 17/395,422 (the 422 Application). The PTAB reversed the obviousness finding of examiner Justin Fischer, supported by Supervisory Patent Examiner (SPE) Katelyn W. Smith, and Quality Assurance Specialist (TQAS) Colleen P. Dunn, on the alleged obviousness of the claims over a combination of three to five references, three of which were the applicant-appellant’s own prior art. The main claim on appeal recited<... Read more
Author:
Derek Lightner, Ph.D.
September 23, 2025
The Patent Trial and Appeal Board recently reversed an obviousness finding of (at least initially non-signatory) Examiner Audrey Buttice, supported by Supervisory Patent Examienr (SPE) Joanne Hama and Office of Patent Quality Assurance (OPQA) official, Jeffrey Siew, for a method of treating a drug-resistant cancer type with an antibody-drug conjugate (ADC) in Ex part Yonesaka, et al., Appl. No. 16/485,777 (Appeal 2024-003040; Technology Center 1600).<... Read more
Author:
Diane Jones
August 4, 2025
Appeal of Examiner’s Final Rejection of claims 18-20 reversed by PTAB based on calculation of an effective human dosage from a “minimal risk of toxicity” dosage for a Cebus monkey rather than a calculation of “minimum pharmacologic activity in humans.”<... Read more
Author:
David Inglefield
July 23, 2025
On June 30, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision regarding transitional phrase claim construction, reversing the decision of the Patent Trial and Appeal Board (PTAB) in Eye Therapies, LLC. v. Slayback Pharma, LLC. The PTAB had previously ruled the claims of U.S. Patent No. 8,293,742 (the ‘742 patent) unpatentable as obvious in a inter partes review brought by Slayback. During the inter partes review, the parties had disagreed on the construction of the transitional phrase “consisting essentially of” in the ‘742 patent. The Court found that the Board had incorrectly applied the conventional open construction of the transitional phrase, which was at odds with the prosecution record. This demonstrates how prosecution history can alter a phrase’s typical meaning.<... Read more
Author:
Matthew Hampton
July 15, 2025
On 18th June 2025, the Enlarged Board of Appeal of the European Patent Office issued Decision G1/24. During Appeal Proceedings (T0439/22) in the Opposition to European Patent No. 3076804B1 (Philip Morris Products S.A.) filed by Yunnan Tobacco International Co., Ltd, the following questions had been referred by the Board of Appeal (Referring Board) to the Enlarged Board of Appeal and subsequently found admissible by that Enlarged Board:<... Read more
Author:
David Inglefield
March 10, 2025
On February 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed the decision of the International Trade Commission (ITC) in US Synthetic Corp. v. International Trade Commission, issuing a precedential decision regarding subject matter eligibility important to the pharmaceutical and other life science industries. The ITC had previously ruled that US Synthetic’s composition of matter claims reciting measured properties of a composition were directed to a patent-ineligible abstract idea under 35 U.S.C. § 101. The CAFC found that the claims were indeed related to concrete structures, not patent-ineligible abstract ideas, and affirmed the lower court’s finding regarding enablement.<... Read more
Author:
Matthew Hampton
March 3, 2025
The Unified Patent Court (UPC) is an international court set up by participating European Union Member States to deal with the infringement and validity of both Unitary Patents1 and European patents. The Agreement on a Unified Patent Court (UPCA) entered into force on 1st June 2023 with the intention of obviating costly parallel patent litigation in the participating European Union Member States and thereby enhancing legal certainty for rights holders.<... Read more
Author:
Xiaohua (Joyce) Guo, Ph.D.
February 18, 2025
In a precedential opinion issued on January 10, 2025, the United States Court of Appeals for the Federal Circuit reversed a district court’s ruling that had invalidated claims 1-4 of U.S. Patent No. 8,101,659 (“the ’659 patent”) for lack of written description.<... Read more