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United States Patent and Trademark Office Sovereign Immunity

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2023

Regents of the University of Minnesota v. Gilead Sciences, Inc., Appeal No. 21-2168 (Fed. Cir. Mar. 6, 2023) The Federal Circuit’s only precedential patent opinion this week focuses on the written description requirement...more

McDermott Will & Emery

Thee I Dismiss: No Love for Failure to Add Necessary Party

After concluding that a trademark owner’s case for failure to add a necessary party was untenable, the US Court of Appeals for the Fifth Circuit affirmed a district court’s dismissal of the case because the necessary party...more

McDonnell Boehnen Hulbert & Berghoff LLP

Top Stories of 2020: #5 to #8

After reflecting upon the events of the past twelve months, Patent Docs presents its 14th annual list of top patent stories.  For 2020, we identified eight stories that were covered on Patent Docs last year that we believe...more

McDonnell Boehnen Hulbert & Berghoff LLP

Top Five Stories of 2019

After reflecting upon the events of the past twelve months, Patent Docs presents its 13th annual list of top patent stories.  For 2019, we identified fifteen stories that were covered on Patent Docs last year that we believe...more

Knobbe Martens

Federal Circuit Review - June 2019

Knobbe Martens on

One-year Clock for Filing IPR Petition Applies to Litigants and Parties that Become Privies of the Litigant Prior to Institution. In Power Integrations, Inc v. Semiconductor Components, Appeal No. 2018-1607, the Federal...more

Ladas & Parry LLP

U.S. Court Of Appeals For The Federal Circuit Has Held That Neither State Agencies Nor Indian Tribes Enjoy Sovereign Immunity,...

Ladas & Parry LLP on

On July 20, 2018 in Saint Regis Mohawk Tribe, Allergan, Inc. v. Mylan Pharmaceuticals Inc., a panel of the U.S. Court of Appeals for the Federal Circuit (Dyk, Moore and Reyna JJ) held that Native American (“Indian”) Tribes do...more

McDonnell Boehnen Hulbert & Berghoff LLP

Regents of the University of Minnesota v. LSI Corp. (Fed. Cir. 2019)

The Federal Circuit handed down its decision in Regents of the University of Minnesota v. LSI Corp. on Friday, and perhaps not surprisingly (in view of its decision last summer in Saint Regis Mohawk Tribe v. Mylan...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Saint Regis Mohawk Tribe v. Mylan Pharm....

Mylan Pharmaceuticals, Inc., Teva Pharmaceuticals USA, Inc., and Akron, Inc. petitioned for inter partes review (IPR) of various patents owned by Allergan, Inc., which the Board instituted. One week before the scheduled IPR...more

Jones Day

Key Patent Decisions of 2018

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In another noteworthy year for patent law, the U.S. Supreme Court and the Federal Circuit issued several decisions that altered the patent landscape, including three Supreme Court decisions and three en banc Federal Circuit...more

Mintz - Intellectual Property Viewpoints

Significant 2018 Patent Decisions and a Look Ahead

This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Federal District Courts penned a number of opinions impacting patent law. Here are some key takeaways from the past year....more

Ladas & Parry LLP

Native American Tribes’ Patents Not Immune from Challenge in the Patent Trial and Appeal Board

Ladas & Parry LLP on

On July 20 in Saint Regis Mohawk Tribe, Allergan, Inc. v. Mylan Pharmaceuticals Inc., a panel of the U.S. Court of Appeals for the Federal Circuit (Dyk, Moore and Reyna JJ) held that Native American (“Indian”) Tribes do not...more

Dickinson Wright

Sovereign Shield Does Not Extend to Inter Partes Reviews

Dickinson Wright on

On Friday, July 20, 2018, the Court of Appeals for the Federal Circuit addressed the controversial application of sovereign immunity for inter partes review (“IPR”) in Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. In...more

Jones Day

Patent Transfer to Native American Tribe Does Not Immunize Patents from Inter Partes Review

Jones Day on

This ruling may have eliminated the practice of transferring patents to Native American tribes for immunization from IPR proceedings. The Federal Circuit, in a matter of first impression, has ruled that tribal sovereign...more

Weintraub Tobin

Federal Circuit Affirms Tribal Immunity Does Not Apply In Inter Partes Review Proceedings Before The USPTO

Weintraub Tobin on

In Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., the U.S. Court of Appeals for the Federal Circuit held that Native American tribal sovereign immunity does not apply in Inter Partes Review (“IPR”)...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2018 #4

St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., Appeal No. 2018-1638, -1639, -1640, -1641, -1642, -1643 (Fed. Cir. July 20, 2018} - In a groundbreaking decision issued on Friday, the Federal Circuit held that tribal...more

Foley & Lardner LLP

Federal Circuit Affirms PTAB Ruling That Tribal Immunity Does Not Apply To IPRs

Foley & Lardner LLP on

On July 20, 2018, the Federal Circuit held in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals that tribal sovereign immunity does not prevent IPR on a patent assigned to a tribe asserting such immunity. The court expressly...more

McDonnell Boehnen Hulbert & Berghoff LLP

Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2018)

Federal Circuit Rejects Use of Tribal Immunity to Shield Patents in IPR Proceedings - The Federal Circuit issued its opinion on Friday in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals, affirming the decision by the...more

Goodwin

Bipartisan PACED Act Introduced to Address Sovereign Immunity

Goodwin on

Yesterday, Senator Tom Cotton (R-Arkansas) announced the introduction of proposed legislation, Preserving Access to Cost Effective Drugs Act, which would permit the Patent and Trademark Office and the International Trade...more

McDonnell Boehnen Hulbert & Berghoff LLP

St. Regis Mohawk Tribe and Allergan Appeal Denial of Motion to Dismiss on Sovereign Immunity Grounds

Clearly wishing to maintain the momentum and initiative in its inter partes review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, the St. Regis Mohawk Tribe and Allergan jointly...more

Locke Lord LLP

No Inter Partes Review Sovereign Immunity For Restasis® Patents

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On February 23, 2018, the Patent Trial and Appeal Board of United State Patent and Trademark Office (“the Board”) denied Saint Regis Mohawk Tribe’s (“the Tribe”) motion to terminate inter partes review (“IPR”) proceedings...more

Tarter Krinsky & Drogin LLP

State University's Filing Of Patent Infringement Action Waives Sovereign Immunity To IPR Proceedings

The PTAB (Patent Trial and Appeal Board) of the USPTO recently issued a decision that a filing of a patent infringement action by a public university waives sovereign immunity to inter partes review (IPR) proceedings in the...more

Jones Day

PTAB Recognizes Limits to Eleventh Amendment Sovereign Immunity

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In a pair of near identical decisions issued on December 19, 2017, an expanded PTAB panel found that the Regents of the University of Minnesota had waived its defense of sovereign immunity by filing actions against the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Skeptical St. Regis Mohawk Tribe Requests Discovery Regarding Panel Selection Circumstances

The creation of adversarial procedures before the Patent Trial and Appeal Board under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business methods review) has raised a number of...more

Patterson Belknap Webb & Tyler LLP

Senators and court complain of ‘anti-competitive’ transfer of patent rights to American Indian tribe

We have previously discussed antitrust implications of pharmaceutical companies’ efforts to maximize patent protection for their drugs. Consumers and generic drug makers, for instance, have alleged antitrust violations based...more

Womble Bond Dickinson

State Universities Gain Immunity from IPRs

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State Universities Gain Immunity from IPRs - Today, many universities own extensive patent portfolios that are managed by sophisticated tech transfer offices. Universities obtain these patents for many reasons, not the...more

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