In Arthrex v. Smith & Nephew, the Supreme Court determined: (i) whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of...more
As discussed here, the Justices asked many questions in the oral argument in Arthrex this week on both questions: (1) whether there was an Appointments Clause defect and (2) if so, whether the Federal Circuit properly cured...more
3/4/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Inferior Officers ,
Patent Trial and Appeal Board ,
Patents ,
Principle Officers ,
SCOTUS ,
Standard of Review ,
United States v Arthrex Inc ,
USPTO
Today, the Supreme Court granted petitions for a writ of certiorari to review the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc. Last Halloween, a Federal Circuit panel held in Arthrex that the way the...more
Today, the Supreme Court granted petitions for a writ of certiorari to review the Federal Circuit's decision in Arthrex, Inc. v. Smith & Nephew, Inc., in which the court of appeals held how administrative patent judges were...more
Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims. The appeal raises issues of finality...more
7/27/2020
/ Administrative Patent Judges ,
America Invents Act ,
Appellate Courts ,
Dismissals ,
Dissenting Opinions ,
En Banc Review ,
Federal Rule 12(b)(6) ,
Hulu ,
Inter Partes Review (IPR) Proceeding ,
Mootness ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Reviewability Determinations ,
Scope of the Claim ,
Section 101 ,
Section 102 ,
Section 103 ,
Sua Sponte ,
Substitute Claims
Federal Circuit Extends Arthrex to Patent Prosecution -
This week, the Federal Circuit extended its holding in Arthrex, Inc. v. Smith & Nephew, Inc., that administrative patent judges ("APJs") were improperly appointed in...more
Last fall, the Federal Circuit held in Arthrex, Inc. v. Smith & Nephew, Inc. that the way the U.S. Patent and Trademark Office (“USPTO”) had appointed administrative patent judges (“APJs”) to the Patent Trial and Appeal Board...more
3/24/2020
/ Administrative Patent Judges ,
America Invents Act ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Denial of Rehearing ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Appointments ,
Officers of the United States ,
Patent Trial and Appeal Board ,
Patents ,
Presidential Appointments ,
Removal For-Cause ,
Severability Doctrine ,
USPTO
On October 31, 2019, in Arthrex, Inc. v. Smith & Nephew, Inc., a three-judge panel of the Federal Circuit held that the way the U.S. Patent and Trademark Office has appointed administrative patent judges at the Patent Trial...more
Under the Eleventh Amendment of the Constitution, States enjoy sovereign immunity from a wide variety of suits. But there are exceptions, including congressional abrogation of immunity. Twenty years ago, in Florida Prepaid...more
Under the America Invents Act, the Patent Trial and Appeal Board has been busy handling inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) proceedings. Petitioners have filed...more
Patent Exhaustion: Supreme Court Expands Patent-Limiting Doctrine -
The U.S. Supreme Court at the end of the past term handed down a decision, Impression Products, Inc. v. Lexmark International, Inc., that greatly expanded...more
Unlike other intellectual property rights, copyright automatically exists when an original work of authorship is fixed in a tangible form of expression. So, while copyright owners may choose to register a copyright claim with...more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
3/22/2017
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Agent Privilege ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trademark Registration ,
Trademarks ,
USPTO
As was widely expected from the Justices’ positions at oral arguments, a nearly unanimous Supreme Court today struck down the patent laches doctrine in SCA Hygiene Prods. Aktiebolag, v. First Quality Baby Prods., LLC, 580...more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
3/16/2017
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Prior Art
Earlier this week, the Federal Circuit issued an order denying a petition for rehearing en banc in the In re Cuozzo Speed Technologies, LLC case. As we have previously reported, this case was the first appeal of the first...more
7/10/2015
/ America Invents Act ,
Amicus Briefs ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Intellectual Property Owners Association ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
PHRMA ,
Post-Grant Review ,
SCOTUS ,
Teva v Sandoz ,
USPTO
In This Issue:
- After B&B Hardware, What is the Full Scope of Estoppel Arising From a PTAB Decision in District Court Litigation?
- When You Don’t Know What You Know: The Role of Unappreciated Inherency in the...more
6/3/2015
/ America Invents Act ,
B&B Hardware v Hargis Industries ,
CLS Bank v Alice Corp ,
Copyright ,
Copyright Infringement ,
Covered Business Method Patents ,
Estoppel ,
Intellectual Property Litigation ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Software ,
Trademark Litigation ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
The America Invents Act (AIA) created several adjudicative proceedings within the Patent Trial and Appeal Board (PTAB) of the U.S. Patent & Trademark Office, including inter partes review, post-grant review, and covered...more
6/1/2015
/ America Invents Act ,
B&B Hardware v Hargis Industries ,
Collateral Estoppel ,
Covered Business Method Patents ,
Inter Partes Review (IPR) Proceeding ,
Issue Preclusion ,
Patent Act ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
SCOTUS ,
Trademark Trial and Appeal Board