News & Analysis as of

America Invents Act

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -

Changes to PTAB Practice Proposed by STRONGER Patents Act of 2017

by Knobbe Martens on

The STRONGER (Support Technology & Research for Our Nation’s Growth and Economic Resilience) Patents Act of 2017 was recently introduced in the Senate by a bipartisan group led by Senator Chris Coons (D-Del.) and co-sponsored...more

Federal Circuit Criticizes PTAB for Failing to Properly Weigh Objective Evidence of Non-Obviousness

by Pepper Hamilton LLP on

The Federal Circuit Court of Appeals again vacated a Patent Trial and Appeal Board (PTAB) panel decision for failing to properly evaluate “objective evidence of non-obviousness” and remanded the case for determinations...more

Is the Pendulum About to Swing Back?

In 2012, the American Invents Act created Inter Partes review (“IPR”) and related proceedings that allowed parties to request that the Patent Office institute a trial to determine the patentability of issued claims. Over the...more

Congressman Lamar Smith and Diverse Industry Groups Support Federal Circuit en banc Review of AIA’s On-Sale Bar

by White & Case LLP on

The recent Federal Circuit ruling that the America Invents Act (AIA) on-sale bar renders a patent invalid if the invention was sold prior to the effective filing date of the patent, even if the sale did not publicly disclose...more

IPR and CBM Statistics for Final Written Decisions Issued in June 2017

by Finnegan – AIA Blog on

The Patent Trial and Appeal Board issued 50 Final Written Decisions in June. It was a relatively difficult month for patent owners, with the Board cancelling 555 (80.32%) of the instituted claims while declining to cancel...more

To Be or Not to Be a Micro Entity

by Baker Donelson on

When filing a patent application with the United States Patent and Trademark Office (USPTO), certain applicants have the option to designate “small entity status” or “micro entity status.” Claiming either small or micro...more

Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc.

by Robins Kaplan LLP on

Case Name: Helsinn Healthcare S.A. v. Teva Pharms. USA, Inc., 855 F.3d 1356, 2017 U.S. App. LEXIS 7650 (Fed. Cir. May 1, 2017) (Circuit Judges Dyk, Mayer, and O’Malley presiding; Opinion by Dyk, J.) (appeal from D.N.J.,...more

Supreme Court Corner Q2 2017

by DLA Piper on

Impression Products, Inc. v. Lexmark International, Inc. PATENT – Decided: May 30, 2017 - HOLDING: All patent rights of a product are exhausted when the product is sold, "regardless of any restrictions the patentee...more

PTAB Can Rely on New Evidence Introduced by Petitioner in its Reply

by Pepper Hamilton LLP on

In a decision last month, the Court of Appeals for the Federal Circuit gave petitioners in AIA proceedings yet another weapon to invalidate patents – by affirming a Patent Trial and Appeal Board (PTAB) decision that relied,...more

AIA Does Not Override 28 USC § 1447(d) Reviewability Bar

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit ruled that provisions in the America Invents Act (AIA) related to federal courts’ jurisdiction over patent claims do not override 28 USC § 1447(d)’s limit on appellate review of...more

Cloud9 Technologies LLC v. IPC Systems, Inc. (PTAB 2017)

Petitioner Cloud9 requested covered business method (CBM) review of IPC's U.S. Patent No. 8,189,566 before the USPTO's Patent Trial and Appeal Board. Due to the claims of the '566 patent not reciting a financial element, the...more

A Court Divided: Judges File Widely Varying Opinions on CBM Review Eligibility

by McDermott Will & Emery on

The standards used by the Patent Trial and Appeal Board (PTAB) for determining what qualifies as a covered business method (CBM) patent under AIA § 18(d)(1) and 37 CFR 42.301(a) have not always been consistent (see, for...more

Trademark and Patent Applicants Opting for a District Court Appeal Must Pay PTO’s Attorney Fees

On June 23, 2017, the Federal Circuit held that, whether they win or lose, patent applicants who appeal adverse PTAB decisions directly to a district court must pay the PTO’s attorneys’ fees. Patent applicants seeking...more

STRONGER Patents Act of 2017 Likely Too Heavy Lift for Congress

by Orrick - IP Landscape on

It may be late July, but the impending Congressional recess has not lessened potential interest by lawmakers in patent reform. On June 21, 2017, Sen. Christopher Coons (D-Delaware) introduced Senate Bill 1390, entitled the...more

Federal Circuit PTAB Appeal Statistics – July 2017

by Finnegan – AIA Blog on

Through July 1, 2017, the Federal Circuit decided 224 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 168 (75%) cases, and reversed or vacated the PTAB on every issue in 22 (9.82%)...more

The STRONGER Patents Act: Swinging the Pendulum in Favor of Patent Owners

by Bass, Berry & Sims PLC on

While the House Judiciary Committee conducts hearings today on "The Impact of Bad Patents on American Businesses," a movement is afoot in the Senate to revitalize the U.S. patent system. On June 21, 2017, a bipartisan group...more

Supply and Purchase Agreement Triggers On-Sale Bar Provision of 35 USC § 102(b)

by McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit reversed the district court and found that a Supply and Purchase Agreement between Helsinn and third-party MGI Pharma, Inc. (MGI) before the critical date of the asserted...more

RWS Inovia Releases 2017 Report on Global Patent Trends

Patent services provider RWS inovia recently released its eighth annual report on global patent and IP trends. In compiling "The 2017 U.S. Global Patent & IP Trends Indicator," RWS inovia, which produces products for PCT...more

The Federal Circuit Clarifies Notice Requirements in AIA Trials

In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., No. 2016-1984 (Fed. Cir. 2017), the Federal Circuit faulted the Patent Trial and Appeal Board (“PTAB”) for violating the Administrative Procedure Act (“APA”) in an...more

Does IPR Extinguish Private Property Rights?

by McDermott Will & Emery on

The Supreme Court of the United States granted certiorari to decide whether only Art. III federal courts, not executive branch tribunals such as the Patent Trial and Appeal Board (PTAB), can decide whether a patent is...more

No Post-Grant Review Where Challenged Claims Are Disclaimed

by McDermott Will & Emery on

Addressing whether disclaimer of all challenged claims prior to institution of post-grant review constitutes a request for adverse judgment, the Patent Trial and Appeal Board (PTAB) found that it did not and denied the...more

PTAB Discretion, Petitions Reliant on Prior Art Cited During Prosecution

by McDermott Will & Emery on

In three recent cases, the Patent Trial and Appeal Board (PTAB) addressed arguments pertaining to when and how it should exercise its discretion to deny some or all grounds for unpatentability in an inter partes review (IPR)...more

Patent Owner Statements in IPR May Result in Prosecution Disclaimer

by McDermott Will & Emery on

Addressing for the first time the issue of whether statements made during America Invents Act post-grant proceedings can trigger a prosecution disclaimer, the US Court of Appeals for the Federal Circuit upheld the district...more

Senate’s STRONGER Patents Act Aims to Address Key PTAB Patent Owner Woes

by Jones Day on

On June 21, Senators Chris Coons (D-Del), Tom Cotton (R-Ark), Dick Durbin (D-Ill), and Mazie Hironoa (D-Hawaii) introduced the “Support Technology & Research for Our Nation’s Growth and Economic Resilience Patents Act of...more

Federal Circuit Denies Motion to Stay Pending Supreme Court Decision in Oil States

by Jones Day on

On June 12, 2017, the U.S. Supreme Court granted certiorari in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, to decide whether inter partes review (IPR) violates the Constitution by extinguishing patent rights...more

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