Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more
This case addresses certain implications of the Laehy-Smith America Invests Act (AIA), namely whether patents with a filing date after March 16, 2013 (pure AIA patents) may be part of an interference proceeding under pre-AIA,...more
SNIPR Technologies Ltd v. Rockefeller University - Before Chen, Wallach, and Hughes. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Patents whose priority is governed...more
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more
In Dionex Softron GMBH vs. Agilent Technologies, Inc., the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the Patent Trial and Appeal Board’s (“Board”) decision in an interference proceeding to award...more
Addressing the applicability of interference proceedings to patent applications filed after the Leahy-Smith America Invents Act (AIA) was enacted, the Patent Trial & Appeal Board (Board) found it proper to declare an...more
On October 1st, Senior Party ToolGen Inc. filed its Motion to Exclude certain evidence presented by Junior Party the Broad Institute, Harvard University, and MIT (collectively, "Broad") in Interference No. 106,126. Broad...more
Lest we forget, there are two other interferences proceeding before the Patent Trial and Appeal Board, one of which (Interference No. 106,127) names ToolGen as Senior Party and as Junior Party the University of...more
This blog has previously discussed the effect of several different types of estoppel. See, e.g., Estoppel Estopped for Remanded Claims, Reminder: Estoppel May Not Preclude Prior-Art Systems, and PGR Estoppel Applies to...more
CHEVRON U.S.A. INC. v. UNIVERSITY OF WYOMING RESEARCH - Before Newman, Lourie, and Schall. Appeal from Patent Trial and Appeal Board. Summary: Intrinsic evidence is sufficient support for claim construction in an...more
On Monday, the Patent Trial and Appeal Board (PTAB) heard oral argument (remotely) from Senior Party the Broad Institute (and its partners as Senior Party, Harvard University and MIT) and Junior Party the University of...more
Many leases for commercial property contain an express covenant of “quiet enjoyment,” which typically provides that the property owner may not interfere with the tenant’s use and occupancy of the property so long as the...more
Federal Circuit Summary - On September 10, 2018, the Federal Circuit decided Regents of the University of California v. Broad Institute, Inc., affirming the Patent Trial and Appeal Board (PTAB)’s determination of no...more
Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., Appeal Nos. 2016-2121, -2208, -2235 (Fed. Cir. 2018)?- In an appeal from a jury trial, the Federal Circuit addressed numerous issues...more
On February 15, 2017, the Patent Trial and Appeal Board (PTAB) terminated a patent interference between the Broad Institute and the University of California, finding the parties’ respective claims to CRISPR-Cas9 systems and...more
Companies looking to waive class action rights of employees may instead be waving goodbye to provisions in their employment contracts. Two recent decisions in California—one administrative and one in the 9th Circuit—recently...more
The Patent Trial and Appeal Board has made its decision regarding the motions each party will be able to bring in Interference No. 108,048 between the Broad Institute and the University of California ("University") over...more
CRISPR (an acronym for Clustered Regularly lnterspaced Short Palindromic Repeats), which is part of a system for altering chromosomal sequences in situ in a cell in combination with a bacterially derived protein called Cas9,...more
Earlier this week, the Patent Trial and Appeal Board (PTAB) set the stage for what is expected to be an epic battle over who owns the intellectual property rights to “the biggest biotech discovery of the century.” On January...more
In In re: Commonwealth Scientific & Industrial Research Organisation, the Federal Circuit held that pre-AIA 35 USC §135(b)(1) does not embody a diligence requirement, such that interfering claims presented more than 5 years...more
The Massachusetts Attorney General is taking action to ensure that general contractors working on public construction are complying with state requirements to use DBE/MBE subcontractors. In August 2015, the Attorney...more
The court finds that defendants’ inequitable conduct defense is not plausible since it is based solely on plaintiff’s failure to disclose information related to the Interference. The court finds that the BPAI terminated the...more
Addressing the impact of the America Invents Act (AIA) on judicial review of interference proceedings, the U.S. Court of Appeals for the Federal Circuit confirmed that a district court may not review Patent Trial and Appeal...more
The Federal Circuit affirmed a decision by the U.S. District Court for the District of Massachusetts that it lacked subject matter jurisdiction under 35 U.S.C. § 146 pursuant to changes in the statute provided by the...more
Analyzing whether proof of conception of a DNA segment invention required a showing of the entire polynucleotide sequence, the U. S. Court of Appeals for the Federal Circuit affirmed the Board of Patent Appeals and...more