Judge Profile

Erica A. Franklin

21 IP cases indexed. Covers patent matters.

Cases Presided Over

21 cases indexed | Page 1 of 1

patent denied

Honeywell International Inc. v.DSM IP Assets, B.V. et al.

· IPR2024-00493

Honeywell International Inc.'s IPR challenge against DSM IP Assets, B.V. et al. was denied by the PTAB. The Board found that the Petitioner failed to meet the reasonable likelihood standard for obviousness over various prior art combinations in the field of biomedical devices and polymer fibers.

patent instituted

Salvacion USA, Inc. et al. v.Trutek Corp.

· IPR2024-00711

Salvacion USA successfully achieved institution in the IPR against Trutek Corp.'s nasal application formulations, facing challenges of anticipation and obviousness over prior art including Chen. The Board found Petitioner's arguments persuasive on the record after detailed claim construction, setting the stage for a full trial.

patent denied

Ovid Therapeutics Inc. v.Marinus Pharmaceuticals, Inc.

· IPR2024-00726

Ovid Therapeutics Inc.'s IPR challenge against Marinus Pharmaceuticals, Inc. was denied by the PTAB on grounds of obviousness (103). The Board found that Petitioner failed to demonstrate a reasonable likelihood of prevailing in its challenges regarding plasma concentration limitations and priority.

patent denied

Biofrontera AG et al. v.Sun Pharmaceutical Industries, Inc.

· IPR2024-00874

The PTAB denied an IPR challenge brought by Biofrontera AG against Sun Pharmaceutical Industries regarding photodynamic therapy illuminators. The Board found the petitioner failed to demonstrate a reasonable likelihood of prevailing on obviousness grounds (103).

patent instituted

Illumina, Inc. v.Molecular Loop Biosciences, Inc.

· IPR2024-00964

Illumina successfully petitioned the PTAB to institute an IPR against Molecular Loop Biosciences regarding next-generation sequencing technology. The Board found a reasonable likelihood of obviousness over Parameswaran and Gloor, allowing the case to proceed to trial.

patent instituted

Illumina, Inc. v.Molecular Loop Biosciences, Inc.

· IPR2024-00965

Illumina successfully secured the institution of Inter Partes Review against Molecular Loop Biosciences' patent, challenging claims 1-6 based on anticipation by Gloor and obviousness over multiple prior art references.

patent denied

Bio-Rad Laboratories, Inc. v.California Institute of Technology et al.

· IPR2024-01177

Bio-Rad Laboratories, Inc. failed to institute an IPR against California Institute of Technology et al.'s patent covering multiplexed analyte detection. The Board found that the Petitioner did not provide sufficient support for key disclosures in the asserted prior art (Saxonov) during the initial petition phase.

patent denied

Bio-Rad Laboratories, Inc. v.California Institute of Technology et al.

· IPR2024-01178

Bio-Rad Laboratories, Inc.'s IPR challenge against California Institute of Technology et al. was denied by the PTAB. The Board found that the Petitioner failed to demonstrate sufficient support for key prior art disclosures in Saxonov from the provisional application, leading to a failure to establish unpatentability under 35 U.S.C. 103(a).

patent instituted

DR. FALK PHARMA GMBH v.Ellodi Pharmaceuticals LP

· IPR2024-01197

DR. FALK PHARMA GMBH challenged Ellodi Pharmaceuticals LP's '729 patent, asserting obviousness of claims related to orally disintegrating corticosteroids for GI tract inflammation. The PTAB declined to deny the petition, finding that additional evidence warranted reconsideration of prior art references like Dohil and FDA Guidance.

patent denied

Curio Bioscience et al. v.Prognosys Biosciences Inc. et al.

· IPR2024-01289

The PTAB denied the IPR petition brought by Curio Bioscience against Prognosys and 10X Genomics, finding that the challenged claims were not obvious over Cantor or anticipated by Frisen. The Board upheld the Patent Owner's position regarding spatial analysis in tissue samples.

patent instituted

Biofrontera Incorporated et al. v.Sun Pharmaceutical Industries, Inc.

· IPR2024-01312

Biofrontera's IPR challenge against Sun Pharmaceutical regarding photodynamic therapy illuminators was instituted by the PTAB. The Board found a reasonable likelihood of prevailing on obviousness grounds over Lundahl and Larsen, focusing on combining prior art elements for flexible device design.

patent instituted

Avation Medical, Inc. v.EMKinetics, Inc.

· IPR2024-01375

Avation Medical successfully secured the institution of its IPR against EMKinetics, challenging claims 1-13 based on obviousness over combinations of prior art. The Board found that Petitioner adequately supported unpatentability by demonstrating skilled artisans could make the claimed modifications to existing nerve stimulation methods.

patent instituted

Avation Medical, Inc. v.EMKinetics, Inc.

· IPR2024-01378

Avation Medical successfully challenged EMKinetics' patent (9002477) in a PTAB decision, asserting that the claims were anticipated or obvious. The Board found strong evidence supporting unpatentability over multiple prior art references, moving the case toward trial.

patent instituted

Bio-Rad Laboratories, Inc. v.California Institute of Technology et al.

· IPR2024-01451

Bio-Rad Laboratories successfully secured the institution of its IPR against California Institute of Technology's patent, challenging claims based on anticipation and obviousness. The Board found that Bio-Rad demonstrated a reasonable likelihood of prevailing regarding Claim 1 over Larson.

patent terminated or settled

Cala Health, Inc. v.EMKinetics, Inc.

· IPR2024-00743

Cala Health and EMKinetics settled their dispute over two patents, filing a joint motion that led the PTAB to terminate the IPRs before any trial was instituted.

patent terminated or settled

Cala Health, Inc. v.EMKinetics, Inc.

· IPR2024-00732

Cala Health and EMKINETICS settled their dispute over two patents, filing a joint motion that led the PTAB to terminate the inter partes review proceedings before trial.

patent terminated or settled

Cala Health, Inc. v.EMKinetics, Inc.

· IPR2024-00732

The PTAB issued an order compelling Cala Health and EMKinetics to file a true copy of their settlement agreement before the joint motion to dismiss can be acted upon, emphasizing compliance with 37 C.F.R. § 42.74(b). A dissenting judge argues the rule does not apply pre‑institution.

patent

Cala Health, Inc. v.EMKinetics, Inc.

· IPR2024-00732

The PTAB issued an order granting Cala Health and EMKinetics' joint request to keep their settlement agreement confidential under 37 C.F.R. §42.74(c), separating it from the IPR file.

patent

Cala Health, Inc. v.EMKinetics, Inc.

· IPR2024-00743

The PTAB issued an order in IPR2024‑00732 and IPR2024‑00743 requiring Cala Health and EMKinetics to file a true copy of their settlement agreement before the proceedings can be terminated.

patent

Cala Health, Inc. v.EMKinetics, Inc.

· IPR2024-00743

The Board issued an order granting Cala Health and EMKinetics' joint request to keep their Confidential Settlement Agreement private under 37 C.F.R. §42.74(c). The agreement will be treated as business confidential information and kept separate from the patent file.

patent terminated or settled

Intersect ENT, Inc. et al. v.New Amsterdam, LLC

· IPR2024-00713

Intersect ENT and New Amsterdam settled their IPR dispute over U.S. Patent 6,916,483, filing a joint motion that led the PTAB to terminate the proceeding before trial.

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