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Intellectual Property Administrative Agency Civil Procedure

Read Intellectual Property Law updates, alerts, news, and legal analysis from leading lawyers and law firms:

The Board can Rely on a Party’s Arguments in an IPR, as Long as it Explains Why

In Outdry Technologies Corp. v. Geox S.P.A., [2016-1769] (June 16, 2017), the Federal Circuit affirmed the Board’s determination that claims 1–15 of U.S. Patent No. 6,855,171 would have been obvious over a combination of...more

PTAB Denies Timely, Relevant Supplement to Petition

by Jones Day on

By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board’s institution decision, and (2) the supplemental...more

Computer-Based Publishing Patent Goes Offline after Alice Inquiry

In a recent order from the District of Massachusetts, the court granted a defendant’s motion for summary judgment in a patent infringement dispute, finding the asserted patent claims invalid under 35 U.S.C. § 101. The court’s...more

Judge Essex Updates Ground Rules to Limit Prehearing Briefs, Opening Statements

by Jones Day on

Last week, Judge Essex issued a notice updating his ground rules in active investigations pending before him...more

A Comparison of US and EPO Post Grant Practices

Challenging the validity of a patent through the courts of Europe and the United States can be a time-consuming and expensive process. Oppositions at the European Patent Office (EPO) and US post-grant cancellation...more

General Statements in Petition and Institution Decision Did Not Give Patent Owner Fair Notice of the Grounds of Invalidity in the...

In Emerachem Holdings, LLC v. Volkswagen Group of America, Inc., [2016-1984] (June 15, 2017), the Federal Circuit affirmed the Board’s decision that claims 1–2, 4–14, and 17–19 of U.S. Patent No. 5,599,758 were obvious, and...more

PTAB Invalidates Two Cisco Patents Found Valid and Infringed at the ITC

The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the...more

Supreme Court to Consider Constitutionality of AIA Inter Partes Review Proceedings

by Snell & Wilmer on

The Supreme Court has granted a writ of certiorari challenging the constitutionality of inter partes review proceedings conducted by the United States Patent and Trademark Office under the America Invents Act. The Court’s...more

Supreme Court Will Decide Whether IPRs Are Unconstitutional

by Knobbe Martens on

The Supreme Court granted a petition for writ of certiorari to address whether inter partes review – an adversarial process used by the Patent Office to determine the validity of existing patents – is unconstitutional in Oil...more

Is The Handwriting On The Wall For IPR's? Supreme Court To Decide…

by Brinks Gilson & Lione on

On June 12, 2017, the U.S. Supreme Court announced a grant of cert for Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, on appeal from the Federal Circuit....more

Oil States v. Lee Brings Mother of all IPR Cases to Supreme Court

On June 12, the Supreme Court took certiorari on probably the biggest IPR case possible: a case challenging the constitutionality of IPRs on separation-of-powers and seventh amendment grounds. This comes just a few weeks...more

Supreme Court to Decide Constitutionality of AIA Reviews

It’s no secret that patentees have been generally unhappy with both the process and outcomes of AIA reviews. Now the Supreme Court has agreed to decide whether the entire AIA review system will be eliminated on...more

District Court deference to PTAB regarding priority claim? Not necessarily.

by Jones Day on

In instituting IPR of a particular patent, the PTAB found that the patent was not entitled to its priority claim, thus opening it up to invalidity attacks. However, because the PTAB’s decision was not being challenged in the...more

Ownership of a Trademark Follows Use

In Lyons v. The American College of Veterinary Sports Medicine and Rehabilitation, [2016-2055](June 8, 2017), the Federal Circuit affirmed the decision of the TTAB cancelling Lyons’ registration of the mark THE AMERICAN...more

Are Inter-Partes-Review Proceedings Constitutional? Supreme Court Will Weigh In

by Jones Day on

Today, the Supreme Court agreed to hear a challenge to the constitutionality of inter partes review...more

Federal Circuit Upholds Claim Construction – No Due Process Violations

by Jones Day on

On May 8, 2017, in Intellectual Ventures II LLC v. Ericsson Inc., 15-1739, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) inter partes review (IPR) claim constructions in a non-precedential decision....more

“Means” Does Not Always Mean “Means Plus Function”

In Skky, Inc. v. Mindgeek, S.A.R.L. [2016-2018] (June 7, 2017), the Federal Circuit affirmed the PTAB decision in IPR 2014-01236 that all of the challenged claims in U.S. Patent 7,548,875 were invalid for obviousness....more

Federal Circuit Review | May 2017

by Knobbe Martens on

Federal Circuit Affirms Different Invalidity Results at PTAB and District Court - In Novartis AG v. Noven Pharmaceuticals Inc., Appeal Nos. 2016-1678, 2016-1679, the Federal Circuit held that prior judicial opinions...more

Cover All Your Bases in ITC Discovery

by Jones Day on

Certain Access Control Systems and Components Thereof, Inv. No. 337-TA-1016 (May 31, 2017), is a good lesson in covering all your bases. Relying on a non-infringement decision by ALJ Pender, respondents assumed that they did...more

There are Few Absolutes In Likelihood of Confusion; Apparently Fame isn’t one of Them

In Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, [2016-1089] (May 24, 2017), the Federal Circuit vacated a Trademark Trial and Appeal Board decision denying cancellation of Fairmont’s Reg. No. 4213619 on the mark...more

Eleventh Amendment Revisited – Board Again Finds Sovereign Immunity Applies to PTAB

by Jones Day on

Less than four months after its decision in Covidien LP v. University of Florida Research Foundation Incorporated, finding that Eleventh Amendment sovereign immunity applies to PTAB proceedings, the Board has again dismissed...more

CAFC: What a Person of Skill in the Art “Could” Do is Insufficient Evidence to Support Obviousness Finding

Duke University owns US 7,056,712 (‘712), which claims methods of treating a metabolic disorder known as Pompe disease. In particular, ‘712 claims methods of treating Pompe disease using a recombinant human acid...more

PTAB Denies Apple's Motion to Withdraw IPR Petition and Motion for Joinder

by Knobbe Martens on

The PTAB denied Apple’s motion to withdraw both its IPR petition and concurrent motion for joinder to prevent Apple from circumventing potential estoppel ramifications in Apple Inc. v. Papst Licensing GmbH & Co. KG,...more

The PTAB Terminates IPR Based on Sovereign Immunity of University of Maryland

by Knobbe Martens on

On May 23, 2017, the PTAB granted the University of Maryland’s (UM) motion to terminate inter partes review based on UM’s sovereign immunity in Neochord, Inc. v. Univ. of Maryland, Baltimore and Harpoon Medical, Inc.,...more

Supreme Court to Hear Another IPR Case — SAS Institute v. Lee

The Supreme Court has granted certiorari in another Inter Partes Review dispute, this time in SAS Institute v. Lee. The Court will decide whether the Patent Trial and Appeal Board may properly institute partial review (i.e.,...more

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