Michael A. Valek
30 IP cases indexed. Covers patent matters.
Cases Presided Over
30 cases indexed | Page 1 of 1
Tempus AI, Inc. v.Guardant Health Inc.
The PTAB affirmed Guardant Health's U.S. Patent 11,149,306 covering cell‑free DNA tagging and counting, finding none of the 29 challenged claims unpatentable after Tempus AI's IPR challenge.
Merck Sharp & Dohme LLC v.Halozyme, Inc. et al.
Merck Sharp & Dohme LLC successfully challenged Halozyme, Inc.'s patent claims on grounds of enablement and obviousness. The Board ruled that the claimed modified polypeptides must exhibit hyaluronidase activity, narrowing the scope of the genus. This decision sets a precedent for interpreting functional limitations in polypeptide patents.
Merck Sharp & Dohme LLC v.Halozyme, Inc. et al.
Merck Sharp & Dohme LLC successfully petitioned the PTAB to invalidate Halozyme, Inc.'s claims covering a genus of modified PH20 polypeptides. The Board found that the broad scope of the claimed variants lacked adequate written description and enablement support in the original patent disclosure. This decision significantly challenges the breadth of the patented technology in hyaluronidase drug development.
Merck Sharp & Dohme LLC v.Halozyme, Inc. et al.
Merck Sharp & Dohme LLC challenged Halozyme, Inc.'s patent on hyaluronidase polypeptides under grounds of enablement and obviousness. The PTAB granted institution, finding the claims cover a vast genus that requires undue experimentation to fully enable.
Merck Sharp & Dohme LLC v.Halozyme, Inc. et al.
Merck Sharp & Dohme LLC successfully challenged Halozyme, Inc.'s '618 patent on grounds of enablement and obviousness regarding modified PH20 polypeptides. The PTAB adopted a functional claim construction requiring hyaluronidase activity for the claimed genus.
Merck Sharp & Dohme LLC v.Halozyme, Inc. et al.
Merck Sharp & Dohme LLC successfully petitioned for institution in a PGR proceeding against Halozyme, Inc., challenging the '758 patent on grounds of enablement and obviousness. The Board adopted a broad claim construction for 'modified PH20 polypeptide,' which significantly broadened the scope of the challenged claims.
Merck Sharp & Dohme LLC v.Halozyme, Inc. et al.
Merck Sharp & Dohme successfully challenged Halozyme's patent claims in a PGR proceeding, focusing on enablement and obviousness. The Board adopted a functional claim construction requiring 'modified PH20 polypeptide' to exhibit hyaluronidase activity.
Merck Sharp & Dohme LLC v.Halozyme, Inc. et al.
Merck Sharp & Dohme LLC successfully challenged Halozyme, Inc.'s '590 patent on grounds of enablement and obviousness. The PTAB found the claims were overly broad regarding polypeptide scope, requiring undue experimentation for a skilled artisan.
Samsung Electronics Co., Ltd. et al. v.Ouraring, Inc. et al.
The PTAB has instituted the IPR against Ouraring, Inc. et al., finding a reasonable likelihood of prevailing for Samsung Electronics Co., Ltd. et al. on multiple grounds of obviousness (103). The institution decision targets 17 claims related to smart rings and biometric monitoring technology.
Samsung Bioepis Co., Ltd. v.Regeneron Pharmaceuticals, Inc.
Samsung Bioepis sought to invalidate numerous claims of Regeneron Pharmaceuticals' ophthalmic formulations using grounds of obviousness (103). The PTAB denied institution based on a holistic Fintiv analysis, citing significant overlap with ongoing district court and MDL proceedings.
LifeScan, Inc. et al. v.Cellspin Soft, Inc.
LifeScan successfully petitioned the PTAB to institute an IPR against Cellspin Soft's patent, asserting that the claimed wireless data transmission methods are obvious over various combinations of prior art. The Board found a reasonable likelihood of prevailing on multiple grounds, moving the dispute into active review proceedings.
LifeScan, Inc. et al. v.Cellspin Soft, Inc.
LifeScan and co-petitioners successfully convinced the PTAB to institute trial on all 15 claims of patent 9900766 against Cellspin Soft, Inc. The Board found sufficient evidence that the claimed multimedia content distribution methods were obvious over various combinations of prior art references, including Singh906, Kahn, and Bluetooth specifications.
Cipla Limited v.Gilead Sciences, Inc.
The PTAB denied Cipla Limited's IPR petition against Gilead Sciences regarding patent 11,744,802, citing the advanced stage of parallel district court litigation and lack of compelling merits.
Arthrex, Inc. et al. v.Medshape, Inc.
The PTAB denied Arthrex's IPR petition against Medshape's patent (7985222), citing the complex and overlapping nature of co-pending district court litigation.
Axion Biosystems, Inc. v.Agilent Technologies, Inc.
The PTAB issued a final decision finding the challenged claims unpatentable over Xu-752 and Jones. The Board concluded that the Petitioner failed to demonstrate non-hindsight motivation for combining the references or making the necessary technical modifications, citing lack of support for millisecond time resolution.
PreOmics GmbH et al. v.The Brigham and Women’s Hospital, Inc.
PreOmics GmbH et al. successfully petitioned for institution in the IPR against The Brigham and Women’s Hospital, Inc., challenging claims related to sensor arrays for protein corona analysis. The Board found a reasonable likelihood of unpatentability based on grounds of anticipation (102) and obviousness (103).
PreOmics GmbH et al. v.The Brigham and Women’s Hospital, Inc.
The Board found that six claims (1, 4, 6, 17, 22, and 25) of the patent were unpatentable based on anticipation by prior art Cai. The decision hinged on a broad interpretation of key terms like 'biological sample' and 'subset of particles,' which favored the Petitioner's arguments regarding the scope of the claims.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
Samsung’s post‑grant review of Oura’s smart‑ring patent (U.S. 11,874,702) was denied. The Board held that none of the 17 claims were obvious over the cited prior art, affirming the patent’s validity.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
Samsung Electronics successfully petitioned to challenge Ouraring's patent (11874702) in a PGR proceeding, leading the PTAB to grant institution. The Board determined that the challenges based on prior art met the institutional threshold for trial.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
The PTAB denied a Post-Grant Review filed by Samsung against Oura Health's patent '701 because the Patent Owner had disclaimed all challenged claims.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
The PTAB denied an IPR petition filed by Samsung against Oura Health because the patent owner had disclaimed all challenged claims. This denial was based on procedural rules regarding pre-institution claim disclaimer.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
The PTAB issued a Final Written Decision rejecting all grounds of obviousness (35 U.S.C. § 103) against the smart ring patent. The Board upheld the validity of the claims, finding that the combination of prior art references required non-obvious structural overhauls and lacked proper nexus to the claimed invention.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
The PTAB denied Samsung's Post-Grant Review petition against Ouraing because the patent owner had statutorily disclaimed all 16 challenged claims.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
Samsung Electronics successfully petitioned to challenge Oura Health's patent (11868178) in a PGR proceeding, leading the PTAB to institute the case. The Board found Petitioner's arguments regarding prior art disclosures for battery and PCB placement sufficient to proceed to trial.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
The PTAB denied institution of an IPR filed by Samsung against Oura Health because the patent owner had formally disclaimed all 12 challenged claims.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
The PTAB granted institution of IPR for Samsung against Oura Health regarding the 'Wearable Computing Device' patent (9582034). The Board found a reasonable likelihood that Samsung would prevail on grounds of obviousness over LeBoeuf.
Samsung Electronics Co., Ltd. et al. v.Oura Health Oy et al.
The PTAB found that several claims related to finger-worn monitoring devices were unpatentable over prior art combinations. The Board adopted a narrow claim construction for 'substantially transparent external potting,' which aided the Petitioner's argument of obviousness.
TikTok Inc. et al. v.Cellspin Soft, Inc.
TikTok and its affiliates successfully petitioned for institution in an IPR against Cellspin Soft regarding wireless communication patents. The Board found a reasonable likelihood of unpatentability based on obviousness over multiple prior art references, including Singh129/Singh906 and Kahn/Bluetooth.
TikTok Inc. et al. v.Cellspin Soft, Inc.
TikTok Inc.'s challenge to Cellspin Soft's patent was instituted by the PTAB, finding a reasonable likelihood that at least one challenged claim is unpatentable. The Board focused on obviousness (35 U.S.C. § 103) over prior art references including Hiroishi, Kahn, and Bluetooth specifications. This decision sets up trial proceedings to determine if the combination of existing technologies renders the patent claims invalid.
Formycon AG v.Regeneron Pharmaceuticals, Inc.
The PTAB denied Formycon AG's IPR against Regeneron Pharmaceuticals, Inc., citing substantial overlap with parallel district court proceedings (MDL). The Board found that the interests of system efficiency were best served by denying institution.
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