Let the Petitioner Beware: Clearing a path by proactively challenging patents in an IPR may result in a lack of standing to appeal an adverse decision

A recent decision by the United States Federal Circuit (AVX Corporation v Presidio Components, Inc (Fed Cir, No 2018-1106, 13 May 2019)) has clarified the requirements for standing to appeal from an inter partes review (“IPR”) before the Patent Trial and Appeal Board (“the Board”), but has left open the issue of estoppel.   AVX

Claim Drafting Tip: Written Description and Obviousness of Claims with Functional Features — Two Sides of the Same Coin

A recent precedential decision by the United States Federal Circuit (Nuvo Pharmaceuticals v DR. Reddy’s Laboratories (Fed Cir, No 17-2473, 15 May 2019) has provided valuable advice on the balance between obviousness and written description.  The decision reversed a final judgement of a District Court Bench Trial that found function-limited claims in US 6,926,907 and US 8,557,285