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Ionis Pharmaceuticals, Inc.

2020002360 (P.T.A.B. Nov. 6, 2020)
Ionis Pharmaceuticals, Inc.

21 Cited authorities

  1. Eli Lilly & Co. v. Barr Laboratories, Inc.

    251 F.3d 955 (Fed. Cir. 2001)   Cited 391 times   8 Legal Analyses
    Holding that the best mode does not extend to unclaimed, non-novel subject matter

  2. Geneva Pharmaceuticals v. Glaxosmithkline

    349 F.3d 1373 (Fed. Cir. 2003)   Cited 140 times   11 Legal Analyses
    Holding that later patent claiming pharmaceutical composition was obvious variant of earlier patent claiming pharmaceutical composition with "enhanced storage stability, the closed container, the packaged unit-dosages"

  3. Oatey Co. v. IPS Corp.

    514 F.3d 1271 (Fed. Cir. 2008)   Cited 91 times   4 Legal Analyses
    Holding that the term "first and second juxtaposed drain ports" does not require "two separate identifiable physical elements"

  4. Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc.

    752 F.3d 967 (Fed. Cir. 2014)   Cited 61 times   5 Legal Analyses
    Finding no clear error in district court's fact finding that "entecavir's ‘effectiveness against hepatitis B without known toxicity issues’ was ‘not unexpected ,’ " and deferring to district court's finding that this was not sufficient evidence of nonobviousness

  5. In re Soni

    54 F.3d 746 (Fed. Cir. 1995)   Cited 92 times   2 Legal Analyses
    Finding "substantially improved results" to overcome obviousness when the 50-fold improvement in tensile strength was much greater than would have been predicted

  6. In re Peterson

    315 F.3d 1325 (Fed. Cir. 2003)   Cited 69 times   14 Legal Analyses
    Holding that any overlap between a claimed range and one in the prior art is sufficient for a prima facie case of obviousness, even if insufficient to render it unpatentable

  7. Sun Pharmaceutical Industries, Ltd. v. Eli Lilly & Co.

    611 F.3d 1381 (Fed. Cir. 2010)   Cited 33 times   2 Legal Analyses
    Holding that in claim construction, "the specification to be consulted is that of the issued patent, not an earlier application"

  8. In re Lonardo

    119 F.3d 960 (Fed. Cir. 1997)   Cited 35 times   5 Legal Analyses
    Holding that "[t]he claimed structure of the device suggests how it is to be used and that use thus would have been obvious"

  9. Merck Co., Inc. v. Biocraft Laboratories

    874 F.2d 804 (Fed. Cir. 1989)   Cited 47 times   2 Legal Analyses
    Holding that the prior art's disclosure of a multitude of combinations failed to render any particular formulation less obvious

  10. In re Basell Poliolefine

    547 F.3d 1371 (Fed. Cir. 2008)   Cited 15 times   2 Legal Analyses
    Holding the two-way test inapplicable where the applicant failed to present the claims in earlier applications in the chain of priority — "Natta's actions, or inactions, had a direct effect on prosecution and thus were responsible for any delay in prosecution"

  11. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,153 times   485 Legal Analyses
    Holding the party seeking invalidity must prove "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."

  12. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 187 times   63 Legal Analyses
    Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

  13. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 98 times   30 Legal Analyses

    (a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622

  14. Section 41.37 - Appeal brief

    37 C.F.R. § 41.37   Cited 32 times   25 Legal Analyses
    Requiring identification of support in specification and, for means-plus-function limitations, corresponding structure as well

  15. Section 1.136 - [Effective until 1/19/2025] Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 Legal Analyses

    (a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)

  16. Section 41.47 - Oral hearing

    37 C.F.R. § 41.47   Cited 1 times   18 Legal Analyses

    (a) An oral hearing should be requested only in those circumstances in which appellant considers such a hearing necessary or desirable for a proper presentation of the appeal. An appeal decided on the briefs without an oral hearing will receive the same consideration by the Board as appeals decided after an oral hearing. (b) If appellant desires an oral hearing, appellant must file, as a separate paper captioned "REQUEST FOR ORAL HEARING," a written request for such hearing accompanied by the fee

  17. Section 1.42 - Applicant for patent

    37 C.F.R. § 1.42   1 Legal Analyses

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and