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Prior results do not guarantee a similar outcome. This information is provided by McKool Smith for informational purposes only and is not intended, nor should it be construed, as legal advice.

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New Evidence in IPRs: Move to Respond or Exclude

On June 14, 2016, the Federal Circuit stated that parties must expect the introduction of new evidence after the PTAB’s institution decision for an inter partes review. Genzyme Therapeutic Prods. Ltd. Partnership v. Biomarin Pharm. Inc. (Fed. Cir. June 14, 2016).   Read more>>

PTAB Cannot Change Claim Construction Without Notice

In SAS Institute, Inc. v. ComplementSoft, LLC (Fed. Cir. June 10, 2016), the Federal Circuit vacated and remanded a PTAB finding of patentability due to a changed claim construction. The PTAB first construed “graphical representations of data flows” in the institution decision, but used a significantly different construction for the final written decision.  Read more>>

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Supreme Court’s Cuozzo Opinion Affirms Use of BRI and Non-Appealability of PTAB Institution Decisions

The Supreme Court issued its Cuozzo opinion on June 20, 2016, affirming that (1) PTAB decisions to institute an inter partes review are not appealable and (2) that the PTAB may use broadest reasonable interpretation (BRI) in construing patent claims for inter partes review.  Read more>>