In Lashify v. ITC, the Federal Circuit held that the economic prong of the domestic industry requirement, which is a precondition for obtaining International Trade Commission Section 337 relief, can be satisfied with...more
For nearly 30 years, the inclusion of a trademark in the design of a defendant's product did not mean much in the design patent infringement analysis. That changed on August 6, 2021, in Columbia Sportswear North America, Inc....more
In United States v. Arthrex Inc., the U.S. Supreme Court agreed with the Federal Circuit that the pre-Arthrex Patent Trial and Appeal Board (PTAB) regime of Administrative Patent Judge decisions being insulated from executive...more
6/24/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
On March 1, 2021, the Supreme Court heard oral arguments in Arthrex v. Smith & Nephew, No. 19-1434, on March 1, 2021, asking whether the appointment of PTAB judges is consistent with the way that “Officers of the United...more
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. The topics of the key cases...more
On June 24, in Dex Media, Inc. v. Click-To-Call Technologies, LP, No. 18-916 (U.S.), the Supreme Court agreed to review the question whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter...more
6/26/2019
/ § 315(b) ,
Appeals ,
Certiorari ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Infringement ,
Patents ,
Remand ,
Time-Barred Claims ,
Vacated ,
Voluntary Dismissals ,
Wi-Fi One
The Supreme Court ruled in Return Mail that a federal agency is not a "person" who may challenge an issued patent in inter partes review, post-grant review, or CBM review under the AIA.
In its 6–3 decision in Return Mail,...more
6/18/2019
/ Administrative Agencies ,
America Invents Act ,
Congressional Intent ,
Covered Business Method Proceedings ,
Ex Partes Reexamination ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Return Mail Inc v United States Postal Service ,
Reversal ,
SCOTUS ,
Statutory Interpretation ,
USPS
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
2/11/2019
/ § 315(b) ,
Claim Construction ,
Constitutional Challenges ,
Corporate Counsel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Sovereign Immunity ,
USPTO ,
WesternGeco LLC v Ion Geophysical Corporation
The Supreme Court unanimously finds that the AIA's "on sale" statutory language did not alter the pre-AIA "on-sale" bar.
On January 22, 2019, the U.S. Supreme Court held that the America Invents Act ("AIA") did not change...more
1/28/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Confidentiality Agreements ,
Helsinn Healthcare SA v Teva Pharmaceuticals USA Inc ,
Inventions ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Public Use ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Section 102 ,
Third-Party Relationships
On January 11, 2019, Dex Media filed a Petition for Writ of Certiorari seeking review of the Federal Circuit’s decision in Click-To-Call Tech. v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc in relevant part)....more
This decision should be a welcome development for patent applicants seeking review.
On July 27, 2018, the U.S. Court of Appeals for the Federal Circuit issued its en banc opinion in NantKwest, Inc. v. Iancu, No. 16-1794...more
8/10/2018
/ 35 U.S.C. § 145 ,
Administrative Proceedings ,
American Rule ,
Attorney's Fees ,
En Banc Review ,
Litigation Fees & Costs ,
Patent Litigation ,
Patents ,
Split of Authority ,
Statutory Interpretation ,
Trademarks ,
USPTO
Last Friday, the Federal Circuit issued its en banc opinion in NantKwest, Inc. v. Iancu, No. 16-1794 (Fed. Cir. July 27, 2018). The Court held, by a 7-4 vote (Judge Chen, the former PTO Solicitor, was recused), that if the...more
7/31/2018
/ 35 U.S.C. § 145 ,
Administrative Proceedings ,
American Rule ,
Appeals ,
Attorney's Fees ,
Fee-Shifting ,
Intellectual Property Owner’s Association (IPO) ,
Litigation Fees & Costs ,
Patent Applications ,
Patent Trial and Appeal Board ,
Patents ,
Statutory Interpretation ,
USPTO
On June 25, 2018, the United States Supreme Court agreed to review the Federal Circuit's decision in Helsinn Healthcare v. Teva Pharmaceuticals, No. 17-1229.
In Helsinn, the Federal Circuit considered whether the America...more
On April 24, 2018, in SAS Institute Inc. v. Iancu, a closely divided U.S. Supreme Court fundamentally changed the way that the Patent Trial and Appeal Board confronts inter partes reviews under the America Invents Act. The...more
6/18/2018
/ Administrative Proceedings ,
America Invents Act ,
Chevron Deference ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS
By statute, an IPR cannot be instituted if the petitioner, real party in interest, or its “privy” was sued for infringing the patent more than one year before the petition for the IPR. 35 U.S.C. § 315(b). As we previously...more
Rumors of the PTAB’s demise were greatly exaggerated, it turns out. In a 7-2 decision, the Supreme Court held on Tuesday that Inter Partes Reviews (IPRs) violate neither Article III nor the Seventh Amendment of the...more
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Rights Doctrine ,
SCOTUS ,
Seventh Amendment ,
USPTO
In another noteworthy year for patent law, the U.S. Supreme Court and Federal Circuit issued a number of decisions that altered the patent landscape, including four Supreme Court decisions. The topics of the key cases...more
2/12/2018
/ America Invents Act ,
Forum Shopping ,
Impression Products v Lexmark International ,
Intellectual Property Protection ,
Life Technologies Corp v Promega Corp ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
SCA Hygiene Products Aktiebolag v First Quality Baby Products ,
SCOTUS ,
Section 101 ,
State of Incorporation ,
TC Heartland LLC v Kraft Foods ,
Venue
In yesterday’s en banc decision in Wi-Fi One v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), the en banc Federal Circuit addressed issues regarding judicial review of the PTAB’s time-bar...more
1/10/2018
/ § 315(b) ,
America Invents Act ,
Appeals ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Time-Barred Claims ,
USPTO
In a closely followed case before the U.S. Supreme Court on behalf of SAS Institute Inc., a cross-office, cross-practice Jones Day team has challenged the Patent Trial and Appeal Board’s (PTAB) practice to elect to institute...more
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
10/11/2017
/ Burden of Persuasion ,
Burden of Proof ,
Burden-Shifting ,
Claim Amendments ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Act ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents
In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears the burden of proving...more
10/6/2017
/ Appeals ,
Burden of Persuasion ,
Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Remand ,
Reversal ,
USPTO
On July 20, SAS Institute, Inc., represented by Jones Day, filed its opening brief in the Supreme Court. SAS’s brief amplifies the arguments, initially set forth in its petition for certiorari and reply brief in support of...more
Today, the Supreme Court agreed to hear a challenge to the constitutionality of inter partes review...more
6/12/2017
/ Administrative Agencies ,
Article III ,
Certiorari ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Private Property ,
Public Rights Doctrine ,
SCOTUS ,
USPTO
On May 26, 2017, the United States District Court for the District of Delaware announced new procedures for assigning cases and handling case-dispositive issues....more
In TC Heartland LLC v. Kraft Foods Group Brands LLC, the U.S. Supreme Court resolved where a domestic corporation "resides" for purposes of the patent venue statute. The Court narrowed the meaning of "resides" under 28 U.S.C....more
5/27/2017
/ Forum Selection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Personal Jurisdiction ,
Principal Place of Business ,
SCOTUS ,
State of Incorporation ,
State of Residency ,
TC Heartland LLC v Kraft Foods ,
Venue