The Federal Circuit addressed questions of motivation to combine and reasonable expectation of success in finding obviousness as well as when an obviousness determination by the Patent Trial and Appeal Board is supported by...more
On Wednesday, the U.S. Food and Drug Administration announced approval to Mylan Pharmaceuticals for a generic form of Allergan's RESTASIS® (Cyclosporine Ophthalmic Emulsion 0.05%) product for treatment of chronic dry eye. ...more
There are some cases where the Federal Circuit makes its decision based on the eternal verities of patent law (insofar as there are any eternal verities in patent law). One such decision arose earlier this month when the...more
The Leahy-Smith America Invents Act prescribed two very different post-grant review proceedings in U.S. patent law. The first, post-grant review (PGR), had some analogies with European opposition practice, in that petitions...more
The inter partes review (IPR) provisions of the Leahy-Smith America Invents Act have been castigated by many for the propensity of the Patent Trial and Appeal Board (PTAB) to find claims challenged in these proceedings to be...more
11/12/2021
/ America Invents Act ,
Claim Construction ,
Expert Testimony ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Preponderance of the Evidence ,
Printed Publications
It being the holiday season in America, it is perhaps appropriate that patent traditionalists get something more than coal in their stocking from Representatives Massie (R-KY), Gohmert (R-TX), Gosar (R-AZ), and McClintock...more
11/11/2021
/ America Invents Act ,
Board of Patent Appeals ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Litigation ,
Patent Reform ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Section 101
The Supreme Court's decision in United States v. Arthrex, Inc., 141 S. Ct. 1970 (2021), at the end of its last term resulted in many cases with pending certiorari petitions that were based on Appointment Clause challenges to...more
In a nonprecedential decision, the Federal Circuit gave a mixture of success and failure to the parties in four separate inter partes review decisions by the Patent Trial and Appeal Board, in C.R. Bard, Inc. v. Medline...more
The Federal Circuit issued three decisions on Monday relating to Eli Lilly & Co's. challenge in separate inter partes review proceedings on obviousness grounds of nine patents licensed by Teva Pharmaceuticals Int'l, with...more
The Federal Circuit, and the Court of Customs and Patent Appeals before it, generally reviewed decisions by the Patent and Trademark Office under the same standard applied to district court decisions, whether the factual...more
In Becton, Dickinson & Co. v. Baxter Corp. Englewood, the Federal Circuit overturned a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review that claims in the challenged patent were not invalid for...more
While much has been written about the effect of the post-grant review provisions of the Leahy-Smith America Invents Act (2012) in invalidating U.S. patents, the change in the law most responsible for how easy it has become to...more
Any patent litigant unwilling to acquiesce to an adverse judgment from the Patent Trial and Appeal Board (PTAB) can appeal to the Federal Circuit. 28 U.S. Code § 141. But the right to appeal is not the same as the wisdom of...more
At least some of the judges on the Federal Circuit have been reported to have voiced some frustration regarding the number of appeals of decisions by the Patent Trial and Appeal Board that are on the Court's docket,...more
The Federal Circuit recently applied well-established principles of obviousness in affirming the Patent Trial and Appeals Board's invalidation of several patents related to antifungal formulations in Anacor Pharmaceuticals,...more
Arthrex recently filed a(nother) certiorari petition with the Supreme Court, this time in Arthrex, Inc. v. Smith & Nephew, Inc., which has also been the subject of petitions from the U.S. government and Smith & Nephew. (This...more
7/20/2020
/ Administrative Patent Judges ,
America Invents Act ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Congressional Intent ,
Constitutional Challenges ,
Due Process ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patents ,
Petition for Writ of Certiorari ,
SCOTUS ,
Severability Doctrine
Last fall, the Federal Circuit decided in Arthrex, Inc. v. Smith & Nephew, Inc. that Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB) were principal officers and thus had been improperly...more
7/16/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Director of the USPTO ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Petition for Writ of Certiorari ,
Principle Officers ,
SCOTUS ,
Split of Authority ,
USPTO
Arthrex recently filed a certiorari petition with the Supreme Court in Arthrex v. Smith & Nephew Inc. (a case related to Arthrex, Inc. v. Smith & Nephew, Inc., which has also the subject of petitions from the U.S. government...more
7/16/2020
/ Administrative Patent Judges ,
America Invents Act ,
Appeals ,
Application of Intervening Laws ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Effective Filing Date ,
Fifth Amendment ,
Forfeiture ,
Inter Partes Review (IPR) Proceeding ,
Petition for Writ of Certiorari ,
Retroactive Application ,
SCOTUS ,
Split of Authority ,
Takings Clause
There is little rhyme nor reason in the cases the Supreme Court decides to review. But the Court has patterns in its case selection that do (to some degree) probe what the Justices think are important questions. One pattern...more
6/25/2020
/ America Invents Act ,
Constitutional Challenges ,
Denial of Certiorari ,
Fifth Amendment ,
Inter Partes Review (IPR) Proceeding ,
Life Sciences ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Retroactive Application ,
SCOTUS ,
Takings Clause
The written description requirement has had a twenty-five year renaissance, particularly in the chemical and biotechnology arts as a way of restricting claim scope to what an inventor has actually invented (see Regents of the...more
6/22/2020
/ Abbreviated New Drug Application (ANDA) ,
Collateral Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Mylan Pharmaceuticals ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Written Descriptions
In Amneal Pharmacueticals LLC v. Almirall, LLC, the Federal Circuit professed to address a question it had not considered before: whether attorney's fees and a exceptional case determination was available for fees and costs...more
6/9/2020
/ Appeals ,
Attorney's Fees ,
Counterclaims ,
Exceptional Case ,
Inter Partes Review (IPR) Proceeding ,
Litigation Fees & Costs ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry
The Federal Circuit continued its explication of the standing issue for unsuccessful petitioners in inter partes review (see "Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp. (Fed. Cir. 2020)") in Pfizer Inc. v....more
5/11/2020
/ Appeals ,
Burden of Proof ,
Dismissals ,
Final Written Decisions ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pfizer ,
Pharmaceutical Patents ,
Standing
Last week, the Federal Circuit had the occasion to address anew the requirements for standing to appeal an adverse decision of the Patent Trial and Appeal Board in an inter partes review proceeding under Article III of the...more
Yesterday, in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court ruled that the provisions of 35 U.S.C. § 315(b), which preclude a petitioner from filing an inter partes review petition more than one year after...more
4/21/2020
/ § 314(d) ,
§ 315(b) ,
America Invents Act ,
Appeals ,
Cuozzo Speed Technologies v Lee ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Reversal ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims
Yesterday, in Thryv, Inc. v. Click-to-Call Technologies, LP[i], the Supreme Court ruled that the provisions of 35 U.S.C. § 315(b)[ii], which preclude a petitioner from filing an inter partes review petition more than one year...more
4/21/2020
/ § 314(d) ,
§ 315(b) ,
America Invents Act ,
Appeals ,
Cuozzo Speed Technologies v Lee ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated