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Administrative Agency Intellectual Property

Read need-to-know updates, commentary, and analysis on Administrative Agency issues written by leading professionals.

Collateral Estoppel May Apply If Claims in a Different, but Related Patent, Have Been Litigated Before

In In re Arunachalam, No. 2016-1607, the Federal Circuit affirmed the PTAB decision holding that Dr. Lakshmi Arunachalam is collaterally estopped from asserting claims in U.S. Patent No. 6,212,556 (’556 Patent) because a...more

Judge Andrews Finds Plaintiff Proved Infringement Of Asserted Claims of Patents-In-Suit Following Three-Day Bench Trial In...

by Fox Rothschild LLP on

Following a three-day bench trial in the matter on June 5-7, 2017 and after having considered the entire record in the case and the applicable law, the Court, through Trial Opinion, entered by The Honorable Richard G. Andrews...more

Federal Circuit Casts Doubt on Antibodies Claimed by Epitope

In Amgen Inc. v. Sanofi, No. 2017-1480, the Federal Circuit reversed and remanded for a new trial because the district court (1) incorrectly excluded post-priority-date evidence regarding written description and enablement,...more

Guide to the U.S. Patent Office’s Materials on Subject Matter Eligibility

by Knobbe Martens on

Since 2014, the USPTO has periodically issued examination guidance, analysis examples, and other insights to guide evaluation of patent subject matter eligibility under 35 U.S.C. § 101. These documents are available on the...more

It May Have Just Gotten a Little Easier to Amend Claims in an IPR

A Factionated Federal Circuit Holds that Petitioner has the Burden to Show Unpatenability - In Aqua Products, Inc., v. Matal, [2015-1177] (October 4, 2017), a plurality of the Federal Circuit en banc held that §316(e)...more

Expanded Panel Ratifies Post-Petition Disclaimer As Legitimate CBM Eligibility Strategy

by Jones Day on

An expanded panel at the PTAB has found that post-Petition claim cancellation is a legitimate strategy for patent owners to avoid CBM jurisdiction. In deciding petitioner’s Institution Decision Rehearing Request in Facebook,...more

Federal Circuit Finds That Petitioners Have Burden Of Persuasion Of Unpatentability Of Claims Amended During An IPR Proceeding,...

by Shook, Hardy & Bacon L.L.P. on

In a much anticipated decision, the Federal Circuit has narrowly decided that a patent owner moving to amend claims during an inter partes review (IPR) does not have the burden of persuasion that the claims are patentable....more

Lessons for Life Science and Medical Device Companies Post-Nautilus

by Robins Kaplan LLP on

Under the U.S. Patent laws, claims must particularly point out and distinctly claim what the inventor understands her invention to be. Up until three years ago, the inquiry for determining indefiniteness was to ask whether...more

Instructional Materials Not Always Sufficient to Show Induced Infringement

by Jones Day on

In a recent Initial Determination, Administrative Law Judge Shaw concluded that the Complainant’s reliance on marketing and instructional materials was not sufficient to prove inducement of infringement of a claimed method....more

Burden of Proving Unpatentability of Amended Claims Placed on IPR Petitioners

by Jones Day on

In an en banc decision, the Federal Circuit in Aqua Products, Inc. v. Matal addressed the question of who bears the burden of proving that claims amended during inter partes review ("IPR") proceedings are or are not...more

GEMSA’s Patent Onslaught Against Cloud Computing Customers

by Shook, Hardy & Bacon L.L.P. on

Global Equity Management (SA) Pty. Ltd. (“GEMSA”), a foreign non-practicing entity (“NPE”) organized under the laws of Australia, filed almost 40 patent lawsuits in five batches in 2015 and 2016. The majority of these...more

In re Stepan Co. (Fed. Cir. 2017)

The Patent Trial and Appeal Board (PTAB) gets most of its attention (judicial and otherwise) regarding its decisions in inter partes review and covered business method proceedings. But the Board also has responsibility for...more

Does Explanatory Language on Your Specimen Make a Mark Descriptive?

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision denying registration of the mark FIRST TUESDAY for use in connection with lottery services and games based on...more

Asserted Claims Found Indefinite in Electrical Connectors Investigation

by Jones Day on

In a recently issued claim construction order, Chief Administrative Law Judge Bullock held that terms included in all asserted claims are indefinite. He accordingly found the asserted claims invalid, stayed the Investigation,...more

General Plastic Industrial Co. v. Canon Kabushiki Kaisha: PTAB Explains Factors Considers for Follow-On Petitions

On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing...more

Federal Circuit Overturns PTAB Fact-Finding Regarding Conception of Invention

by Jones Day on

In IPR2014-01198, the PTAB found that the patent owner failed to prove that the patented invention was conceived prior to the date of the prior art, and thus concluded that the patent was unpatentable. The Federal Circuit...more

The Cheerios Challenge of Registering Color Marks

by McDermott Will & Emery on

The Trademark Trial and Appeal Board (TTAB) delivered a primer on demonstrating the acquired distinctiveness of product packaging or trade dress, including color marks, in refusing registration of a trademark application for...more

Federal Circuit Shifts Burden of Proof for Amendments in Post-Grant Proceedings

by Hogan Lovells on

On October 4, 2017, the Federal Circuit, sitting en banc, issued a ruling in Aqua Products, Inc. v. Matal, placing the burden of persuasion on the petitioner to prove the invalidity of amended claims in post-grant...more

Federal Circuit Shifts Burdens for Motions to Amend

On October 4, 2017, the Federal Circuit, sitting en banc, issued its long-awaited decision in Aqua Products, Inc. v. Matal. Appeal No. 2015-1177. The court was fractured in its analysis, issuing five opinions. Seven judges, a...more

Federal Circuit Rejects Some USPTO Requirements For Amending Claims During IPR Proceedings

by Brooks Kushman P.C. on

On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision rejecting certain procedures adopted by the Patent Trial and Appeal Board (PTAB or Board) limiting a patent owner’s ability to...more

Mayo at Five: Are Traditional Method of Treatment Claims in Danger Under Section 101?

by Fish & Richardson on

Just over five years ago, the Supreme Court began reshaping the concept of patent-eligible subject matter in the life sciences with its decision in Mayo v Prometheus. The Mayo case introduced a new two-step test for patent...more

Disclaimer of All Challenged Claims Results in Denial of IPR Institution

by McDermott Will & Emery on

The Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) where the patent owner filed a statutory disclaimer of all claims challenged in the petition. Xilinx, Inc. v. Godo Kaisha IP Bridge 1,...more

Federal Circuit Places The Burden Of Persuasion For Motions To Amend In IPRs On Petitioners

by Knobbe Martens on

The Federal Circuit issued an en banc decision instructing the PTAB to assess patentability of amended claims in IPR proceedings without placing the burden of persuasion on the patent owner. Aqua Products, Inc. v. Matal, No....more

The PTAB Holds That Testimony Concerning Customer Statements and Their State of Mind Constitutes Hearsay

On September 22, 2017, the United States Patent Trial and Appeal Board (PTAB) issued a final written decision regarding claims directed to a switching regulator comprising a power switch and a control circuit. The PTAB found...more

Minnesota Patent Litigation Wrap-Up – September 2017

by Fish & Richardson on

This post continues our monthly summary of patent litigation in the District of Minnesota, including short summaries of substantive orders issued in pending cases. In September 2017, there was one notable decision for...more

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