Since the inception of inter partes reviews (IPRs) and post grant reviews (PGRs) under the America Invents Act, the option for a patent owner to file a motion to amend its claims was always present, but motions to amend were...more
To wrap up 2019 and usher in 2020 for practitioners who handle Patent Trial and Appeal Board (PTAB) matters, Foley partners Jeanne Gills, Steve Maebius, and George Quillin discussed 2019’s major developments in a webinar on...more
1/23/2020
/ America Invents Act ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
PTAB Precedential Opinion Panel (POP) ,
Real Party in Interest ,
USPTO
One area of estoppel arising from an unsuccessful AIA petition that remains poorly understood relates to prior art that is described both in a printed publication or patent and also was in use by others, such as to create...more
The Patent Trial and Appeal Board (“PTAB”) issued its initial Trial Practice Guide in August 2012, shortly before America Invents Act (“AIA”) post-grant proceedings became available. That Guide had not been supplemented or...more
On June 13, 2018, Sen. Hatch (R-Utah) introduced an amendment that would require generic ANDA filers to choose between litigating validity in Hatch-Waxman district court litigation or an AIA challenge (IPR or PGR), and on...more
6/18/2018
/ Abbreviated New Drug Application (ANDA) ,
America Invents Act ,
Food and Drug Administration (FDA) ,
Generic Drugs ,
Hatch-Waxman ,
Intellectual Property Protection ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prescription Drugs ,
Proposed Legislation ,
Tribal Governments
Today in Oil States v. Greene’s Energy, the Supreme Court upheld the constitutionality of IPR proceedings, finding that they are a permissible second review of patents conducted by the administrative agency that issues them...more
4/27/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patents ,
Post-Grant Review ,
Public Rights Doctrine ,
SCOTUS ,
Seventh Amendment ,
USPTO
March 31st marked the mid-point of the PTAB’s fiscal year and the release of mid-year statistics on AIA proceedings...
...One interesting trend is a continued increase in overall number of IPR petitions (mid-year there are...more
On January 9, 2017, in Phigenix, Inc. v. Immunogen, Inc., the Federal Circuit held that petitioner Phigenix lacked standing to appeal an adverse final written decision in an IPR. While acknowledging that the AIA permits a...more
1/18/2017
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Article III ,
Burden of Production ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Trial and Appeal Board ,
Patents ,
Standing
In what appears to be a case of first impression, the PTAB is poised to rule on the question of whether state sovereign immunity prevents an IPR challenge from being maintained against a University of Florida (“UF”) patent...more
On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply “to all AIA petitions filed on or after the effective date and to any ongoing AIA...more
4/6/2016
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Covered Business Method Proceedings ,
Duty of Candor ,
Expert Testimony ,
Final Rules ,
Genuine Issue of Material Fact ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
USPTO
On March 31, 2016, the USPTO released its long-awaited package of rules for AIA post-grant proceedings. The final rules largely track the proposed rules (see “USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings” to...more
An obvious but sometimes overlooked item when conducting patent due diligence is to check for PTAB proceedings (CBM, IPR, or PGR). Although the Patent Application Information Retrieval System (PAIR) does show whether patents...more
In IPR2014-00614, Microsoft filed a petition for IPR against US Patent No. 7,418,504 (“the ‘504 patent) owned by VirnetX, which was instituted based upon anticipation grounds over Kiuchi (see institution decision). This IPR...more
On February 11, 2016, in Nike v. Adidas (Fed. Cir. 2016), the Federal Circuit partially relaxed the hurdle for a patent owner to amend claims during an IPR or other AIA proceeding. This follows the PTAB’s own earlier partial...more
On December 3, 2015, in MCM Portfolio LLC v. Hewlett-Packard Co., a panel of the Federal Circuit unanimously upheld the constitutionality of IPR proceedings, finding that delegation of patent invalidity determinations to a...more
On December 3, 2015, the Federal Circuit issued a notice of proposed changes to its Rules of Practice, many of which relate to IPR practice under the AIA... Some of the proposed changes impact the manner by which appeals from...more
Following a string of denials, the PTAB has recently instituted IPR against several pharmaceutical patents where the petitions were filed by entities linked to hedge funds. Prior to these recent institution decisions, there...more
Today the USPTO released a 113-page set of proposed changes to AIA post-grant proceedings, including IPR, PGR and CBM proceedings. The USPTO has been attempting to address concerns expressed by the public, having implemented...more
8/21/2015
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Regulation ,
Rule 11 ,
USPTO
Today in In re Cuozzo Speed Technologies, LLC, No. 14-1301, a majority (Judges Dyk and Clevenger) affirmed the Patent Trial and Appeal Board’s (PTAB) decision to deem certain claims of a speed limit indicator patent...more
On November 13, 2013, the U.S. Patent Trial and Appeal Board (PTAB) issued its first final decision in an inter partes review (IPR) proceeding brought by Garmin under the new administrative procedures established by the...more