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Happy 2nd Birthday, Inter Partes Review – By the Numbers

Happy 2nd Birthday, Inter Partes Review – By the Numbers

By • on September 25, 2014

Welcome to Volume 7 of our IPR-PGR Quarterly Report. Please contact us with any questions about these Patent Office procedures. We take special

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IPR-PGR

A Successful Motion for Additional Discovery in an Inter Partes Review

A Successful Motion for Additional Discovery in an Inter Partes Review

By • on November 12, 2014

Countless parties to inter partes review can tell you how to lose a Motion for Additional Discovery. This is especially so for discovery motions seeking

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PTAB Grants Rare IPR “Motion to Compel”

PTAB Grants Rare IPR “Motion to Compel”

By • on November 10, 2014

Many parties to inter partes review proceedings continue to have their guns pointed directly at their feet, taking erroneous actions that are consistently

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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

PTAB Clarifies its Stances on § 315 on the Way to the Federal Circuit

PTAB Clarifies its Stances on § 315 on the Way to the Federal Circuit

By • on November 11, 2014

In an apparent attempt to better explain itself prior to Federal Circuit appeal, the PTAB reiterated and further clarified its decision in

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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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More Great Intellectual Property Law Topics

Paragraph IV Certification Does Not Constitute “Civil Action” That Bars IPR

Momentum is growing in the filing of inter partes petitions by drug companies seeking to invalidated Orange Book patents. We will be keeping a close eye on some of the issues that are unique to these

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Motion for Observation of One’s Own Witness Not Allowed in IPR

In developing the procedures for inter partes reviews, the Patent Office pulled out a rarely-used legal concept called a Motion for Observation Upon Cross-Examination. Used in IPR proceedings to allow

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Conclusory Arguments Plus Citation to KSR Insufficient to Institute IPR

The Board has instructed, time and again, that a Petition for Inter Partes Review must tell a story. Mere conclusory attorney argument, or conclusory statements from an expert, are not sufficient to carry

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Ornamental Feature of Claim Given No Patentable Weight by PTAB in Obviousness Analysis

Not all claim limitations are treated equally. In

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