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Genentech, Inc. v. Iancu (Fed. Cir. 2020)

The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also...more

Galderma Laboratories, L.P. v. Amneal Pharmaceuticals LLC (Fed. Cir. 2020)

The Federal Circuit continued its recent willingness to affirm findings of infringement under the doctrine of equivalents (see, e.g., "Eli Lilly & Co. v. Hospira, Inc. (Fed. Cir. 2019)"), in Galderma Laboratories, L.P. v....more

Kaken Pharmaceutical Co. v. Iancu (Fed. Cir. 2020)

Ever since the Supreme Court's decision in Dickinson v. Zurko, patent applicants (and with the advent of inter partes review proceedings before the Patent Trial and Appeal Board, patentees) have found it difficult to overcome...more

Genentech, Inc. v. Hospira, Inc. (Fed. Cir. 2020)

Last week, the Federal Circuit affirmed invalidation of claims to methods for reducing Protein A leaching in affinity column chromatographic methods important inter alia in purifying monoclonal antibodies, in Genentech, Inc....more

OSI Pharmaceuticals, LLC v. Apotex Inc. (Fed Cir. 2019)

Last week, the Federal Circuit overturned an obviousness determination in an inter partes review by the Patent Trial and Appeal Board in OSI Pharmaceuticals LLC v. Apotex Inc.  The Court also reaffirmed its holdings in...more

State of Minnesota Petitions for Certiorari in Regents of University of Minnesota v. LSI Corp.

Not unexpectedly, the State of Minnesota, as sovereign of the Regents of the University of Minnesota, filed on Thursday its petition to Supreme Court for certiorari.  The State contends that the Federal Circuit erred in...more

Enzo Life Sciences, Inc. v. Becton, Dickinson and Co. (Fed. Cir. 2019)

Last week, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) finding claims of U.S. Patent No. 7,064,197 to be invalid for anticipation or obviousness, in Enzo Life Sciences, Inc. v. Becton,...more

Celgene Corp. v. Peter (Fed. Cir. 2019)

The Federal Circuit affirmed a determination by the Patent Trial and Appeal Board (PTAB) that two patents owned by Celgene Corp. were invalid in Celgene Corp. v. Peter decided last week.  In rendering its decision, the Court...more

Dr. Falk Pharma GmbH v. Generico, LLC (Fed. Cir. 2019) - July 2019

The interplay (or perhaps utilization) of inter partes review (IPR) in ANDA litigation was illustrated by the Federal Circuit in last month's Dr. Falk Pharma GmbH v. Generico, LLC nonprecedential decision....more

Mayne Pharma Int'l v. Merck Sharp & Dohme Corp. (Fed. Cir. 2019)

The Federal Circuit continued its explication of the circumstances wherein an inter partes review petition is time-barred under 35 U.S.C. § 315(b) in Mayne Pharma Int'l v. Merck Sharp & Dohme Corp., decided earlier this...more

Supreme Court Denied Certiorari Writ by St. Regis Mohawk Indian Tribe in Restatis® IPR

On April 15, 2019, the U.S. Supreme Court denied a petition for writ of certiorari by the St. Regis Mohawk Indian Tribe on the question (answered in the negative by the Patent Trial and Appeal Board and the Federal Circuit)...more

Sanofi Mature IP v. Mylan Laboratories Ltd. (Fed. Cir. 2019)

One of the criticisms of the post-grant review proceedings instituted under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business method review) was the (relative) unavailability of...more

Mylan Pharmaceuticals Inc. v. Research Corporation Technologies, Inc. (Fed. Cir. 2019)

Earlier this month, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) that the claims of U.S. Reissue Patent No. RE38,551 challenged in inter partes review were not unpatentable for...more

Momenta Pharmaceuticals, Inc. v, Bristol-Myers Squibb Co. (Fed. Cir. 2019)

The Federal Circuit has on several occasions taken the opportunity to address (and in doing so, flesh out) the requirements for Article III standing to appeal an adverse determination in a post-grant review proceeding...more

Amerigen Pharmaceuticals Ltd. v. UCB Pharma GmbH (Fed. Cir. 2019)

The Federal Circuit recently reviewed yet another decision by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office in Amerigen Pharmaceuticals Ltd. v. UCB Pharma GmbH, and once again reviewed...more

Tris Pharma, Inc. v. Actavis Laboratories FL, Inc. (Fed. Cir. 2018)

A certain amount of comment has recently been evinced from the patent bar by the voicing from several members of the Federal Circuit, including the Chief Judge, of their dismay over the number of patent cases coming to the...more

Arista Networks, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2018)

AIA Post-grant Reviews Not Precluded by Assignor Estoppel - On Friday, November 9, 2018, the Federal Circuit handed down its decision in Arista Networks, Inc. v. Cisco Systems, Inc., deciding that the Board had erred in...more

E. I. du Pont de Nemours & Co. v. Synvina C.V. (Fed. Cir. 2018)

The Federal Circuit reversed a finding of non-obviousness in a Patent Trial and Appeal Board decision in an inter partes review, in an opinion handed down Monday in E. I. du Pont de Nemours & Co. v. Synvina C.V....more

PTAB Rules Inter Partes Review Time Bar Depends on Service of Process Date

Patent law has traditionally been considered to be fraught with traps for the unwary, which in practice just means that it is unwise to assume anything (see Carl S. Koening, "Clarifying Patent Terminology and Patent Concepts...more

St. Regis Mohawk Tribe Petitions Federal Circuit for En Banc Review of Panel Decision Voiding Sovereign Immunity in Inter Partes...

On July 22nd, the Federal Circuit issued its opinion in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., affirming the decision by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office that...more

USPTO Issues Updated PTAB Practice Guide for Post-grant Review Proceedings

On August 8th, the U.S. Patent and Trademark Office issued revisions to its Patent Trial and Appeal Board (PTAB) Guide, first promulgated in 2012 as part of the Office's implementation of inter partes review (IPR), post-grant...more

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

XY, LLC v. Trans Ova Generics, L.C. (Fed. Cir. 2018)

Judge Pauline Newman has been concerned regarding constitutional issues raised by the U.S. Patent and Trademark Office Patent Trial and Appeal Board's implementation of inter partes review as provided by the Leahy-Smith...more

Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd. (Fed. Cir. 2018)

Last week, the Federal Circuit found all patent claims invalid for obviousness in an inter partes review, in Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd. But the Court did not render its decision...more

USPTO Issues Guidance on Supreme Court Ruling in SAS v. Iancu

Well, that didn't take long. The U.S. Patent and Trademark Office issued Guidance today, just two days after the Supreme Court decision in SAS Institute Inc. v. Iancu came down, regarding how the Patent Trial and Appeal...more

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