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Twenty-One Months of Inter Partes Review – By the Numbers

Twenty-One Months of Inter Partes Review – By the Numbers

By • on July 2, 2014

Welcome to Volume 6 of our IPR-PGR Quarterly Report.  This Report brings news of a large spike in Petition filings and some interesting trends

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IPR-PGR

An Overdue Discussion of the PTABs Grant of the First IPR Motion to Amend

An Overdue Discussion of the PTABs Grant of the First IPR Motion to Amend

By • on October 22, 2014

It is hard to explain how this post, discussing the first ever granted Motion to Amend in an inter partes review, sat in “draft” mode for over 5 months.

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PTAB Shows a Willingness to Intervene in Deposition Disputes

PTAB Shows a Willingness to Intervene in Deposition Disputes

By • on October 21, 2014

Experienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time

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AIA

America Invents Act

America Invents Act

By • on August 13, 2014

Significant changes to the US Patent laws are being implemented as a result of the Leahy-Smith America Invents Act (AIA).  The protection of inventions,

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Patent Prosecution

An Unsuccessful Reach for the STELARA, Written description of generic biomolecule claims

An Unsuccessful Reach for the STELARA, Written description of generic biomolecule claims

By • on July 3, 2014

AbbVie owns US 6,914,128 (’128), which covers a variety of anti-IL12 monoclonal antibodies. AbbVie markets an anti-IL12 monoclonal (viz. Humira®) as

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All We Like Sheep Have Gone Astray

All We Like Sheep Have Gone Astray

By • on May 9, 2014

The CAFC extends Myriad beyond DNA claims Much ink has recently been spilled arguing that the PTO’s new guidelines

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Litigation

At Harness Dickey’s Urging, the Supreme Court Made it Easier to Get Attorney’s Fees in Patent Cases

At Harness Dickey’s Urging, the Supreme Court Made it Easier to Get Attorney’s Fees in Patent Cases

By • on May 2, 2014

Harness Dickey secured a landmark ruling for its client Octane Fitness, in a decision issued Tuesday by the United States Supreme Court that alters the

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Prove that You Are DIFFERIN Enough!

Prove that You Are DIFFERIN Enough!

By • on December 13, 2013

Galderma v. Tolmar & the Future of Selection Inventions In the recent case of Galderma Labs v. Tolmar Inc., the Federal Circuit announced an important

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HD Signals

Harness Dickey Stronger with Additional USPTO Location

Harness Dickey Stronger with Additional USPTO Location

By • on February 17, 2012

The United States Patent and Trademark Office (USPTO) recently announced that it intends to place six administrative patent judges with the Board of Patent

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ADAPTING TO PATENT REFORM

ADAPTING TO PATENT REFORM

By • on October 31, 2011

Patent “Reform” — the America Invents Act — which is being implemented over the next eighteen months, makes significant changes

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More Great Intellectual Property Law Topics

Later Priority Date for IPR-Challenged Patent Where No Written Description in Parent

The Board denied an interesting attack from Patent Owner who suggested that Petitioner’s argument, that the patent-at-issue was not entitled to the priority date of its parent, was barred in inter partes review

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PTAB Disqualifies Art as Being Non-Analogous to Claimed Invention

A limited number of cases, to date, have dealt with the issue of analogous prior art in an obviousness analysis. In

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Infringement Contentions From Copending Litigation Not Allowed as Supplemental IPR Information

The circumstances under which the Board will entertain the inclusion of “supplemental evidence” in an inter partes review proceeding remains a moving target. It is worth noting, therefore, the case

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PTAB Offers Guidance Regarding Discovery in Inter Partes Reviews

Still confused about how much discovery you will be able to obtain in an IPR? Fear not, as two of the PTAB’s Administrative Patent Judges have weighed in with a

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