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
In Carr v. Saul, the U.S. Supreme Court unanimously held that a party can raise a challenge under the Constitution’s Appointments Clause to an Administrative Law Judge’s (“ALJ”) decision, even if the party did not raise the...more
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
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 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
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 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
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
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
In SCA Hygiene Products v. First Quality Baby Products, decided on March 21, 2017, the U.S. Supreme Court significantly reduced the role of the laches defense in patent actions: "Laches cannot be interposed as a defense...more
3/25/2017
/ Appeals ,
Damages ,
Defense Strategies ,
Equitable Estoppel ,
Laches ,
Patent Act ,
Patent Infringement ,
Patents ,
Petrella v. MGM ,
SCA Hygiene Products Aktiebolag v First Quality Baby Products ,
SCOTUS ,
Separation of Powers ,
Statute of Limitations
Section 271(f)(1) of the Patent Act provides that a party infringes a patent claim when it "supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention...more
2/27/2017
/ Appeals ,
Component Parts Doctrine ,
Cross-Border Transactions ,
Exports ,
Extraterritoriality Rules ,
Life Technologies Corp v Promega Corp ,
Manufacturer Liability ,
Motion to Set Aside the Verdict ,
Patent Act ,
Patent Infringement ,
Patents ,
Reversal ,
SCOTUS