Inter Partes Review Proceedings

News & Analysis as of

Trustees of Columbia University v. Illumina, Inc. (Fed Cir. 2015)

One of the first IPR petitions ever filed, IPR2012-0006, was related to biotechnology -- specifically DNA sequencing. Illumina, Inc. filed that petition, and two others, IPR2012-00007 and IPR2013-00011, against patents owned...more

Joinder Provisions of IPR Continue to Save Co-Defendants in Litigation

The joinder provisions of inter partes review proceedings were instituted as a direct response to the ability of parties to settle proceedings before a final written decision is instituted. Via the joinder rules, a second...more

Patent Trial and Appeal Board Claim Construction Cannot Be Unreasonable - Microsoft Corp., v. Proxyconn, Inc.

Although the U.S. Court of Appeals for the Federal Circuit has held that the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) has the authority to use the broadest reasonable interpretation claim...more

IP Newsflash - July 2015 #4

FEDERAL CIRCUIT CASES - Federal Circuit Grants Mandamus Disallowing Use of U.S. Discovery in Foreign Proceedings - The Federal Circuit has granted mandamus vacating a New Jersey district court’s order that allowed...more

That’s Not What They’re For

On July 28, 2015, the patent owner in Coalition for Affordable Drugs VI LLC v Celgene Corporation, IPR2015-01103, filed a motion for sanctions pursuant to 35 USC §316(a)(6) and 37 CFR §42.12, arguing that petitioner was...more

Patent Appeals Board Denies Petition for Inter Partes Review of Medline Industries Patent

The Patent Trial and Appeal Board (“PTAB”) denied a petition by C.R. Bard, Inc. requesting inter partes review of claims 1 and 2 of U.S. Patent No. 8,488,786, entitled “Catheter Tray, Packaging System, Instruction Insert, and...more

Sanofi Seeks IPR of Cabilly Patent

On July 27, 2015, Sanofi-aventis U.S. LLC and Regeneron Pharmaceuticals, Inc. filed a petition for Inter Partes Review (IPR) of the “Cabilly II” patent, U.S. Patent No. 6,331,415. The Cabilly II patent granted shortly after I...more

The Federal Circuit Reviews Patent Trial and Appeal Board Decisions on Inter Partes Review

There are now three decisions of the Federal Circuit on appeals from the Patent Trial and Appeal Board (PTAB) on inter partes reviews: - In re Cuozzo Speed Technologies LLC - Belden Inc. v. Berk-Tek LLC and -...more

Catalog Search Posted On Claim Preclusion Does Not Bar Additional Discovery Relating to Privity Challenge in Later-Filed IPR...

The Patent Trial and Appeal Board recently designated a decision granting a request for additional discovery as an informative opinion. Informative opinions are not binding; they rather provide guidance on rules and...more

PTAB Average Time-To-Decision in IPRs May Surprise You

This post was co-authored by Foley & Lardner Summer Associate Jonathan E. Robe. Ever wonder how long it takes the PTAB to decide to institute trial? Ever have someone ask how long it will take for the Board to issue its...more

House Committee Advances Competing Patent Reform Legislation

With yesterday’s House Judiciary Committee vote, there are now competing, and in some respects significantly different, patent reform proposals under serious consideration in the House and the Senate. Among the most important...more

Lessons From The 1st Biopharma Inter Partes Reviews

Recently, the Patent Trial and Appeal Board issued its first set of final written decisions in three inter partes reviews relating to molecules in the large molecule biopharma space (IPR2013-00534, IPR2013-00535 and...more

The Court of Justice’s Preliminary Ruling in Huawei v. ZTE: The Final Word?

The application of competition law to standard essential patents (SEPs) has been the subject of significant debate. The latest instalment was provided by the Court of Justice on 16 July 2015 with its much-anticipated...more

Endo Pharma Patent Survives IPR Trial

Amneal Pharmaceuticals came up short in its bid to knock out numerous claims of Endo Pharmaceuticals’ US Patent No. 8,329,216 in a Final Written Decision issued on July 22, 2015, Amneal Pharm., LLC v. Endo Pharm. Inc.,...more

Federal Circuit Upholds Broadest Reasonable Interpretation in Inter Partes Review

A divided Federal Circuit denied the petition for rehearing en banc that would have required the court to revisit its decision in In re Cuozzo Speed Technologies, LLC (Fed Cir 2015), that upheld the USPTO’s use of the...more

Attacking Patents on Written Description & Enablement Grounds in Inter Partes Review

Although Inter Partes Review (IPR) is limited to grounds of unpatentability based upon prior art references, it is nevertheless possible to raise issues of written description or enablement by applying intervening prior art...more

Design Patent Case Digest: Simmons Bedding Company v. Sealy Technology LLC

Decision Date: March 31, 2015 - Court: U.S. Patent Trial and Appeal Board - Patents: D622,531 - Holding: Examiner’s decision in reexamination proceeding not to adopt Requester’s obviousness rejections REVERSED...more

PTAB Designates New “Informative Opinion”

When the PTAB considers one of its own decisions to be “informative,” it is always worth taking note. On Friday, July 17th, the Board designated its opinion in Arris Group, Inc. v. C-Cation Techs., IPR2015-00635 as...more

District Court Lifts Stay after PTAB Confirms Eight Claims Even Though Defendant Planned to Appeal to the Federal Circuit

The district court had previously granted Defendant Respironics, Inc.'s ("Respironics") unopposed motion to stay the patent infringement action filed by the plaintiff, Zoll, pending an inter partes review ("IPR") of the...more

Tangle Between Hair Care Companies Stayed Pending IPR

Days after the PTAB instituted Inter Partes Review (IPR), Judge Alvin Thompson in the District of Connecticut has stayed a case between Conair and Tre Milano. Conair sued Tre Milano in October 2014, for infringing U.S....more

Federal Circuit Affirms First Patent Trial and Appeal Board (PTAB) Decision in a Covered Business Method Review

On July 9, 2015, a divided panel of the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the first Patent Trial and Appeals Board (“PTAB”) decision concerning Covered Business Method (“CBM”) reviews, which were...more

Versata Development Group, Inc. v. SAP America, Inc. (Fed. Cir. 2015)

Section 18 of the Leahy-Smith America Invents Act (AIA) established a transitional program through which the USPTO conducts post-grant reviews of covered business method (CBM) patents. For the most part, § 18 incorporates...more

Microsoft v. Proxyconn: Lessons in Claim Construction and Amendments in IPRs

Inter partes reviews (“IPRs”) are a cheaper and faster alternative to patent litigation, instituted in 2012 by the America Invents Act. IPRs allow parties to challenge the validity of patents in the U.S. Patent and Trademark...more

After Transfer, Case Is Stayed Pending IPR Even Though Only Three of Twenty-Two Claims Were at Issue in the IPR

Plaintiff ACQIS, LLC ("ACQIS") filed a patent infringement action in the Eastern District of Texas alleging that Defendant EMC Corporation ("EMC") had infringed claims in 11 patents owned by ACQIS. Specifically, ACQIS alleged...more

IPR Broader Review Standard Upheld by Narrow Federal Circuit Majority

On July 8, 2015, the full Federal Circuit decided not to reconsider en banc (before all the judges) the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board’s (PTAB) standard to construe patents broadly for inter...more

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