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Sheridan Ross attorneys help Terumo BCT earn favorable IPR decision

A team of attorneys from Sheridan Ross served as lead counsel for petitioner Terumo BCT, Inc., a global leader in blood component and cellular technologies, to earn a favorable inter partes review (IPR) decision from the Patent Trial and Appeal Board (PTAB).

The June 24, 2016 Final Written Decision of the PTAB found that Terumo “met its burden of showing, by a preponderance of the evidence,” that three claims of Patent 8,777,921 B2, titled “Sterile Sampling Methods and Apparatus,” were unpatentable.

The PTAB decision allows Terumo BCT and others in the apheresis industry to continue the proactive use of a design that was in the public domain to further safe and cost-effective solutions for blood component collection and sampling. In addition, the findings of the Board reassert the premise that once in the public domain, inventions cannot be pulled back and monopolized.

Patent Owner Noble House Group Party Ltd. had filed a paper disclaiming all other claims in the case centered around its sampling device, which allows for the collection of multiple samples of a liquid in a primary container with minimal danger of contamination to the liquid during sampling.

Like many of the 5,000-plus America Invents Act petitions filed since September 2012, the Terumo BCT petition focused on the subject of obviousness and ordinary skill in the art to yield expected results. The Board determined that is was reasonable that a person of ordinary skill in the art would have found it obvious to add known components to the device disclosed in the SSK Pamphlet to create the apheresis sampling kit cited in the relevant patent claims.

According to the PTAB decision, a primary factor in the decision centered on the scope and content of prior art which included the Noble published SSK Pamphlet.

​ ​​About Terumo BCT
Terumo BCT, Inc. is a global leader in blood component and cellular technologies, and the only company with the unique combination of apheresis collections, manual and automated whole blood processing, and pathogen reduction coupled with leading technologies in therapeutic apheresis and cell processing.

Terumo BCT strives to make safer, higher-quality transfusions available to more people, while working to unlock the potential of blood and cell therapies and support researchers in developing cellular therapies that may fundamentally improve health care.

About IPRs
Inter partes review is a trial proceeding conducted at the Patent Trial Appeal Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications.

Created by the America Invents Act, inter partes review proceedings are changing the face of patent litigation. Lower cost, lower burden of proof to invalidate claims, lead to advantages for patent challengers in these post-grant proceedings. The inter partesreview process has added an efficient and cost-effective avenue to test the patentability of patent claims outside of expensive District Court litigation.

For first-inventor-to-file patents, the inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. These deadlines do not apply to first-to-invent patents.

The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting inter partes review took effect on September 16, 2012.  (Source: USPTO)

Additional Links:
http://www.uspto.gov/sites/default/files/documents/2016-5-31%20PTAB.pdf
http://www.uspto.gov/patents-application-process/appealing-patent-decisions/trials/inter-partes-review

Sheridan Ross Team Members:
Robert Brunelli
Tadd Wilson
John Hueton
Lori Brown

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