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
Damned if you do . . .
Great cases like hard cases make bad law. For great cases are called great, not by reason of their importance . . . but because of some accident of immediate overwhelming interest which appeals to...more
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
The sequel to the original summer blockbuster movie, Jaws, had as a tagline "Just when you thought it was safe to go back in the water." This sentiment can describe much of U.S. patent law over the last decade and a half,...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
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 the doctrine of patent exhaustion. This equitable doctrine prevents a...more
12/8/2017
/ Breach of Contract ,
Exports ,
First Sale Doctrine ,
Foreign Sales ,
Imports ,
Impression Products v Lexmark International ,
IP License ,
Patent Exhaustion ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Resales Agreements ,
SCOTUS ,
Single-Use/No Resale Restriction ,
Stream of Commerce
One of the characteristics of autumn is a harvest of vegetables in the squash family, including the ubiquitous pumpkin (equally famous for pumpkin pie and infamous for pumpkin spiced varieties of seemingly any food product). ...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
On November 17, 2017, the Federal Circuit granted a writ of mandamus to Micron Technology, Inc. involving their motion challenging venue in a patent infringement lawsuit brought by The President and Fellows of Harvard...more
Last month, the Federal Circuit rendered a decision in Amgen Inc. v. Sanofi that brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement in 35 U.S.C. ยง 112(a)...more
The Federal Circuit reversed a finding of non-obviousness on Friday based on clear error by the District Court on factual underpinnings of its obviousness determination, in Bayer Pharma AG v. Watson Laboratories, Inc. Such...more
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
The Federal Circuit continues its explication of the law of obviousness post-KSR Int'l. v. Teleflex Inc. (and Judge Pauline Newman continues to disagree with her brethren in some regards) in a decision handed down last...more
The Supreme Court most recently revisited the proper standards for making an obviousness determination ten years ago, in KSR Int'l. Co. v. Teleflex. Inc. While in some ways changing the obviousness standard, for example...more
On October 16, 2017, the Financial Times (London) published an article by Rana Foroohar entitled "Big Tech vs. Big Pharma: the battle over US patent protection." If the article can be encapsulated in a word, that word would...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
Patent law has always been tasked with interpreting law in an ever-shifting factual environment, where well-established principles need to be applied to new technology. Twenty years ago, the Federal Circuit grappled with the...more
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
Judge Gilstrap's Short-lived Venue Calculus -
The Federal Circuit has spent more than a decade as the Supreme Court's favorite judicial whipping boy, usually because the Court apprehended that their appellate inferior had...more
9/22/2017
/ Abuse of Discretion ,
Appeals ,
Jurisdiction ,
Patent Infringement ,
Patents ,
Physical Presence Test ,
Principal Place of Business ,
Reversal ,
TC Heartland LLC v Kraft Foods ,
Transfer of Venue ,
Venue ,
Writ of Mandamus
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
A major conceit of the "genomics" revolution, involving the various species-specific genome projects epitomized by the one for Homo sapiens was the idea that decoding a genome would tell us everything there was to know about...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