The Supreme Court reversed the judgment of the Federal Circuit today in SAS Institute Inc. v. Iancu. In a rare close decision in patent cases, Justice Gorsuch (joined by the Chief Justice and Justices Kennedy, Thomas, and...more
There has been a great deal of angst generated by the practice before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB) of expanding panels from the customary three Administrative Patent Judges to...more
The Federal Circuit has granted the St. Regis Mohawk Tribe's motion for stay in inter partes review proceedings before the Patent Trial and Appeal Board, in St. Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. In the Order,...more
The St. Regis Mohawk Tribe and Allergan filed a joint motion late last week before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (PTAB), arguing that its Notice of Appeal divested the Board of...more
Clearly wishing to maintain the momentum and initiative in its inter partes review proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, the St. Regis Mohawk Tribe and Allergan jointly...more
In an extensive, 42-page per curiam opinion, the Patent Trial and Appeal Board (PTAB) surprised no one last Friday by denying the St. Regis Mohawk Tribe's motion to terminate several inter partes review proceedings based on...more
Although having built up a track record for several years and several thousand petitions and "trials," inter partes review proceedings under the Leahy-Smith America Invents Act are still relatively new. As a statute...more
In what everyone (including the Patent Trial and Appeal Board) considers an unprecedented administrative action, the PTAB late last year set our an order (Patent Trial and Appeal Board's Order, 2017 WL 5067421, P.T.A.B. Nov....more
As previously reported, the St. Regis Mohawk Tribe filed a request for oral hearing that included a "request for discovery into the identity and impartiality of the merits panel assigned to this case." The paper was replete...more
The creation of adversarial procedures before the Patent Trial and Appeal Board under the Leahy-Smith America Invents Act (post-grant review, inter partes review, and covered business methods review) has raised a number of...more
1/4/2018
/ Administrative Procedure Act ,
America Invents Act ,
Covered Business Method Patents ,
Discovery ,
Federal Rules of Civil Procedure ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Sovereign Immunity ,
USPTO
The Patent Trial and Appeal Board was seemingly sufficiently vexed over the question of whether the St. Mohawk Indian Tribe was entitled to have the Board dismiss, on grounds of sovereign immunity, inter partes reviews on...more
Perhaps overlooked in the widespread assessments of the Supreme Court's questioning of the parties in Oil States Energy Services, LLC. v. Greene's Energy Group, LLC is the argument before the Court in SAS Institute, Inc. v....more
12/6/2017
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patents ,
Post-Grant Review ,
Private Property ,
Public Property ,
SCOTUS ,
USPTO
On November 27, 2017, the Supreme Court considered the question of whether the inter partes review process established by the U.S. Patent and Trademark Office in implementing portions of the Leahy-Smith America Invents Act or...more
11/28/2017
/ Administrative Proceedings ,
America Invents Act ,
Amicus Briefs ,
Article III ,
Certiorari ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Invalidity ,
Patents ,
Post-Grant Review ,
Private Property ,
Public Property ,
Right to a Jury ,
SCOTUS ,
Seventh Amendment ,
USPTO
Late this summer, Allergan entered into an agreement with the St. Regis Mohawk Nation to assign its rights in several Orange Book-listed patents involved in inter partes review proceedings, with the aim of having those...more
In something of an anticlimax, Federal Circuit Judge William Bryson, sitting by designation on the bench of the U.S. District Court for the Eastern District of Texas, granted Allergan's motion to join the St. Regis Mohawk...more
The Patent Trial and Appeal Board (PTAB) gets most of its attention (judicial and otherwise) regarding its decisions in inter partes review and covered business method proceedings. But the Board also has responsibility for...more
10/10/2017
/ Appeals ,
Board of Patent Appeals ,
Burden of Proof ,
Burden-Shifting ,
Covered Business Method Proceedings ,
Ex Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Standard of Review ,
Vacated
Not unexpectedly, on Friday, the Saint Regis Mohawk Tribe (SRMT) filed a motion before the Patent Trial and Appeal Board (PTAB) to have inter partes review Nos. IPR2016-01127, IPR2016-01128, IPR2016-01129, IPR2016-01130,...more
The value of the post-grant review programs (post-grant review, inter partes review, and covered business methods review) has been debated since these provisions were enacted as part of the Leahy-Smith America Invents Act in...more
The 11th amendment to the Constitution reads:
The judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by citizens of...more
The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office recently issued a Final Written Decision in an inter partes review styled Mylan Pharm. v. AstraZeneca AB affirming the patentability of all challenged...more
Last week, the Federal Circuit completed its review of a series of patents relating to treating Pompe disease and invalidated by inter partes review before the U.S. Patent and Trademark Office's Patent Trial and Appeal Board...more
The Federal Circuit handed down two related opinions last week, Los Angeles Biomedical Research Institute v. Eli Lilly & Co. and Eli Lilly & Co. v. Los Angeles Biomedical Research Institute, one of which raised the question...more
In an otherwise unremarkable albeit precedential decision, the Federal Circuit set forth an explication of when the Patent Trial and Appeal Board has, and has not, given the court enough information to determine whether its...more
In a precedential decision the Federal Circuit vacated and remanded a Patent Trial and Appeal Board decision invalidating claims from Nuvasive's U.S. Patent No. 8,361,156 in an inter partes review instituted on a petition by...more
Diligence is a patent concept whose applicability was severely restricted under the changes in U.S. patent law created under the Leahy-Smith America Invents Act. Diligence is important when determining whether an invention...more