Intellectual Property Civil Procedure Administrative Agency

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An IPR Does Not Necessarily Have Standing to Appeal if it Loses

In Phigenix, Inc. v. ImmunoGen, Inc., [2016-1544] (January 9, 2017), the Federal Circuit held that Phigenix, the losing petitioner in an IPR, lacked standing to appeal the PTAB’s decision that claims 1–8 of U.S. Patent No....more

Beacon Navigation GmbH v. Ford Motor Company

Case Name: Beacon Navigation GmbH v. Ford Motor Company - Docket Number: 2:13-cv-11381-PJD-MAR - Date Filed: 3/28/2013 - Judge: Hon. Victoria A. Roberts - Status: Stayed 01/07/2016 - On March 28, 2013, Beacon...more

Federal Circuit Dismisses IPR Appeal for Lack of Standing

In Phigenix v. ImmunoGen, Appeal No. 16-1544 (Fed. Cir. Jan. 9, 2017), a precedential decision, the Federal Circuit found that the petitioner lacked standing to appeal the Patent Trial and Appeal Board’s (PTAB) final written...more

Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition

The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi...more

Full Federal Circuit To Consider Appealability of PTAB Decision On Timeliness of IPR Petition

The Federal Circuit has ordered en banc review to consider whether the timeliness of a petition for inter partes review (IPR) can be appealed following the Patent Trial and Appeal Board’s decision to institute review. Wi-Fi...more

An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant...more

Federal Circuit to Reconsider Achates Decision en banc

The Federal Circuit is set to reconsider one of its more controversial decisions en banc, when it decides whether the Achates Reference Publishing, Inc. v. Apple Inc. decision was correctly decided. Specifically, in Wi-Fi...more

New Ground of Invalidity Introduced After Institution Requires Proper Notice

Addressing the issue of introducing a new ground of invalidity after institution of an inter partes review (IPR) on which the Patent Trial and Appeal Board (PTAB or Board) relied to render a final written decision, the US...more

District Court Dismisses USPTO December 2015 Holidays Case

On December 2, 2016, Judge O’Grady of the U.S. District Court for the Eastern District of Virginia granted the USPTO’s motion to dismiss the complaint brought by Elm 3DS Innovations, LLC over the “holidays” declared December...more

A Quick Look at the New Trademark Trial and Appeal Board Rules

The Trademark Trial and Appeal Board ?TTAB? will implement new rules on January 14, 2017, that will apply to all inter partes proceedings (oppositions, cancellations, concurrent use) and ex parte appeals that are pending on,...more

Broadest Reasonable Interpretation Does Not Include Legally Incorrect Interpretation

In D’Agostino v. Mastercard International, Inc., [2016-1592, 2016-1593] (December 22, 2016), the Federal Circuit vacated the PTAB’s decision in two Inter Partes Reviews that the challenged claims in U.S. Patent Nos. 7,840,486...more

Reduced Scope of Post-IPR Estoppel Imperils Litigation Stays

In Depomed, Inc. v. Purdue Pharma LP et al., 3-13-cv-00571 (NJD November 4, 2016, Mem. Op. Dkt. 238) (Bongiovanni, MJ), the Court analyzed and applied recent Federal Circuit decisions limiting the scope of post-IPR estoppel...more

IPR Estoppel Narrowed Even Further in D. Delaware Ruling

Despite the astounding success for patent challengers to date in IPR proceedings, are you one who has been worried about the effects of the IPR estoppel in future litigation? Has this concern dissuaded you from considering...more

Unreasonable Claim Construction Causes PTAB Reversal

In a fairly case-specific claim construction analysis, the Federal Circuit reversed the PTAB recently in D’Agostino v. Mastercard, Int’l, 2016-1592, -1593 (Fed. Cir. Dec. 12, 2016), finding that the Board erred in determining...more

Federal Circuit PTAB Appeal Statistics – December 2016

Through December 1, 2016, the Federal Circuit decided 141 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 109 (77.30%) of the cases, and reversed or vacated the PTAB on every issue in...more

PTAB Reversed on Issue of Diligent Reduction to Practice

Perfect Surgical Techniques (PST), Inc. owns US 6,030,384 (‘384). Olympus petitioned for Inter Partes review of ‘384 as anticipated or obvious over JP H10-33551 (JP ‘551). JP ‘551 published less than one year before the...more

Improving Patent Eligibility for Your Software Despite the Prohibition of Patent Protection for "Abstract Ideas"

As technologies advance, the Patent Office (as well as the Nation’s courts) must utilize Section 101 of the Patent Act to place reasonable limitations on patent eligibility to ensure that our patent system balances the...more

PTAB Obviousness Decision Must Provide “Reasoned Explanation” For Motivation To Combine References

In a recent pair of decisions, the Federal Circuit has tightened the procedural and substantive requirements for Board decisions on obviousness. In Nuvasive, the Federal Circuit vacated a PTAB final decision that challenged...more

Diamonds In The Rough: TTAB Refuses Registration For Repeating Pattern

In a precedential decision in In re Fantasia Distribution Inc, Serial 86185623 (September 21 2016), the Trademark Trial and Appeal Board (TTAB) held that a repeating diamond design pattern appearing on an electronic hookah...more

Federal Circuit Reverses PTAB Patent Invalidation Based on Lack of APA Due Process

Inter partes review (IPR) petitioners must ensure adequate notice of arguments against validity; patent owners must preserve rights to defend against all arguments raised by petitioners—even when they arise late in the...more

Post-Alice Section 101 Eligibility Roadmap for Software Inventions

In the wake of Alice the waters of eligibility under section 101 can be challenging to navigate, and particularly so for those seeking to obtain or enforce software patents. A two-part test for eligibility is the standard,...more

If the PTAB Doesn’t Say Why the Invention is Obvious, the Federal Circuit Has Nothing to Affirm

In re Nuvasive, Inc., [2015-1670] (December 7, 2016), the Federal Circuit vacated and remanded the PTAB Decision finding claims of U.S. Patent No. 8,361,156 invalid for obviousness. The Federal Circuit found that Nuvasive...more

Prosecution Disclaimer Has No Teeth

Statements made by patent practitioners to the patent office during patent prosecution can come back to bite you in related applications. Prosecution disclaimer allows a court to limit the literal scope of the claims in an...more

PTAB Holds Oral Hearings In Tecfidera Patent IPR and Interference

On November 30, 2016, the USPTO Patent Trial and Appeal Board (PTAB) held oral hearings in two different inter partes proceedings involving the Biogen Tecfidera® patent with the latest expiation date. First, it heard...more

USPTO's New Trademark Trial and Appeal Board Rules Take Effect Soon

Next month, the procedural rules governing trademark registration disputes are changing. They present new strategic considerations for brand owners protecting their trademark rights. The Trademark Trial and Appeal Board...more

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