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Intellectual Property Administrative Agency

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

PTAB Extends Deadline to Decide IPR Motion to Amend in view of Aqua Products

by Knobbe Martens on

The PTAB extended the deadline for issuing its IPR final written decision on a motion to amend by up to six months to provide additional time to consider the impact of the Federal Circuit’s recent en banc Aqua Products...more

Allegan’s Restasis Patents Invalidated By A Federal District Court Even After Transfer To Native American Tribe And Sovereign...

by Weintraub Tobin on

In Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al, Case No. 2:15-cv-1455-WCB (EDTX October 16, 2017 Order), a Federal District Court recently invalidated several patents covering Allergan’s dry-eye drug Restasis. The...more

PTAB Declines Request to Review Method of Treating Lymphoma Claim

A Patent Trial and Appeal Board (PTAB) panel declined to institute an inter partes review (IPR) of a claim directed to a method for treating low grade B-cell non-Hodgkin’s lymphoma. The challenged method required patients to...more

PTAB Makes Precedential Its Multi-Factor Approach To Assessing Follow-On Petitions

by Jones Day on

Serial IPR or CBM petitions challenging the same patent claims have been a recurring issue for the PTAB. On October 18, 2017, the PTAB designated as precedential a portion of a decision by an expanded panel that addressed...more

PTAB Institutes IPR Despite Potential Time Bar to Petition

On October 6, 2017, the Patent Trial and Appeal Board (the “Board”) granted institution of inter partes review under 35 U.S.C. § 103(a) of claims directed to an online game. Notably, institution was granted despite the Board...more

Looking Beyond Patents at the International Trade Commission—Is the ITC an Underutilized Forum?

by Ropes & Gray LLP on

The United States International Trade Commission (“ITC”) is an independent, quasi-judicial federal agency responsible for enforcing Section 337 of the Tariff Act, a trade statute designed to protect U.S. industries from...more

PTAB Issues Precedential Opinion Regarding “Follow-On” Petitions

“If at first you don’t succeed, try, try again…” may not be an appropriate mantra for the PTAB. Today, the PTAB made precedential an opinion that was initially issued on September 6, 2017 regarding the appropriateness of...more

The Federal Circuit Explains Admissibility of Post-Priority Date Evidence Regarding Written Description and Enablement Proofs

by Locke Lord LLP on

Is post-priority date evidence admissible as relevant to determining whether a patentee has complied with the written description requirement? What about for enablement? Recently, the Federal Circuit answered those...more

PTAB Designates as Precedential General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha Decision on Serial Petitions

by Finnegan – AIA Blog on

Today the PTAB designated part of its decision in General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (P.T.A.B. Sept. 6, 2017) as precedential. In Section II.B.4.i of the decision—the only...more

ALJ Finds Violation in Mobile Device Holders Investigation

by Jones Day on

ALJ Pender’s initial determination in Certain Mobile Device Holders and Components Thereof, Inv. No. 337-TA-1028 (Sept. 12, 2017), finding a violation of Section 337, provides important guidance on what investments count...more

Sovereign Immunity and Inter Partes Review

by Knobbe Martens on

Sovereign immunity refers to the doctrine that the government cannot be sued without its consent. Specifically, the 11th Amendment precludes federal courts from exercising jurisdiction over states in suits brought by private...more

The Demise of Rule 36 Judgments in Federal Circuit Decisions Relating to IPRs

The Federal Circuit issued a fairly mundane decision yesterday in Boundary Solutions, Inc. v. Corelogic, Inc.(PTAB October 17, 2017), affirming the PTAB’s decision to cancel all challenged claims of two related patents. Over...more

The PTAB Authorizes Additional Motion To Amend Briefing in View of Aqua Products

by Knobbe Martens on

The Board authorized petitioner Kingston to file a Response to the patent owner’s Reply to petitioner’s Opposition to Motion to Amend, based on the Federal Circuit’s en banc holding that the burden to establish...more

Patents for Billion Dollar Restasis Drug Under Siege

Using an innovative strategy, pharmaceutical company Allergan recently transferred the patents associated with the eye drug, Restasis, to the Saint Regis Mohawk Tribe, in exchange for an exclusive license back. The tribe...more

ITC Denies Request to Modify Protective Order

by Jones Day on

In a recent Notice, the Commission denied Respondents’ motion to modify the administrative protective order (APO) to permit them to use a third party’s confidential business information in related European proceedings....more

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

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