On the same day that patent challengers breathed a sigh of relief once the Supreme Court upheld the constitutionality of inter partes review (IPR) in Oil States, the Court also threw a monkey wrench into the way IPRs will be...more
After the biggest challenge yet to the Patent and Trademark Office’s popular inter partes review proceedings, the name of the game is largely “same old” for today’s Supreme Court decision in Oil States Energy Services, LLC v....more
On February 23rd, 2018, a panel of the Patent Trial and Appeal Board (PTAB or “Board”) decided that: (1) Indian tribal sovereignty did not apply to post-grant proceedings established under the America Invents Act (AIA) and...more
In an en banc decision issued today, January 8, 2018, the Federal Circuit ruled that a patent owner appealing an adverse inter partes review (IPR) decision can raise the issue whether the IPR should have been found to be...more
8 Ways To Avoid Inter Partes Review Estoppel -
Inter partes review has become an enormously popular method of challenging patents. One important downside of filing for IPR, however, is that, if the petitioner loses, it...more
Inter partes review has become an enormously popular method of challenging patents. One important downside of filing for IPR, however, is that, if the petitioner loses, it faces an estoppel that could prevent it from raising...more
The United States Supreme Court decided today that: (1) the United States Patent and Trademark Office (PTO) acted within its rulemaking authority by adopting the rule that patent claims must be given their “broadest...more
6/21/2016
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Chevron Deference ,
Claim Construction ,
Cuozzo Speed Technologies v Lee ,
Final Judgment ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Standard of Review ,
USPTO
The 2015 Changes to the Federal Rules Matter for Your Patent Case and Tech Business: Getting in the Courthouse Door Just Got Tougher -
It used to be that a complaint for patent infringement would survive a motion to...more
4/22/2016
/ America Invents Act ,
Anti-Monopoly ,
Broadest Reasonable Interpretation Standard ,
Copyright Infringement ,
Cuozzo Speed Technologies v Lee ,
FRAND ,
Germany ,
Huawei ,
Injunctions ,
Inter Partes Review (IPR) Proceeding ,
Japan ,
Japan Fair Trade Commission (JFTC) ,
Judicial Review ,
Motion to Dismiss ,
Patent Infringement ,
Patents ,
Pleading Standards ,
SCOTUS ,
Standard Essential Patents ,
USPTO ,
Websites ,
ZTE
Not so fast: the United States Supreme Court is set to review the America Invents Act’s (“AIA”) fast-track inter partes review (“IPR”) process. On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed...more
1/21/2016
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Certiorari ,
Cuozzo Speed Technologies ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Infringement ,
Patents ,
Rulemaking Process ,
SCOTUS ,
USPTO
The Survey Says: Tiffany Is Not Generic for A Ring Setting -
Last month, the Southern District of New York granted summary judgment to Tiffany & Co. on its trademark infringement claim against Costco Wholesale...more
10/8/2015
/ Abuse of Dominance ,
Abuse of Process ,
America Invents Act ,
Apple v Samsung ,
China ,
Costco ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
European Court of Justice (ECJ) ,
Fair Use ,
FRAND ,
Germany ,
Hedge Funds ,
Injunctive Relief ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
Judicial Review ,
Microsoft ,
Monopolization ,
Motion for Sanctions ,
Motorola ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Penalties ,
SAIC ,
Standard Essential Patents ,
Summary Judgment ,
Tiffany and Company ,
USPTO ,
Versata
The Patent Trial and Appeals Board (PTAB) dismissed Celgene Corporation’s (“Celgene”) motions for sanctions against the Coalition for Affordable Drugs (“the Coalition”).
As we previously reported, the Coalition is an...more
The Patent Trial and Appeals Board (PTAB) previously authorized Celgene Corporation (“Celgene”) to move for sanctions against the Coalition for Affordable Drugs (“Coalition”), an entity affiliated with a Kyle Bass hedge fund...more
8/26/2015
/ Abuse of Process ,
America Invents Act ,
Hedge Funds ,
Inter Partes Review (IPR) Proceeding ,
Motion for Sanctions ,
Patent Infringement ,
Patent Litigation ,
Patent Trolls ,
Patents ,
Pharmaceutical Patents ,
Real Party in Interest
In This Issue:
- En Banc Federal Circuit Abandons “Strong” Presumption That a Limitation Is Not Subject to 35 U.S.C. § 112, Paragraph 6
- Supreme Court Rejects Belief of Invalidity Defense for Inducement in...more
7/8/2015
/ Cisco v CommilUSA ,
EU ,
European Patent Convention ,
European Patent Office ,
First Amendment ,
Free Speech ,
Induced Infringement ,
Inter Partes Review (IPR) Proceeding ,
Japan ,
Japan Patent Office ,
Lanham Act ,
Means-Plus-Function ,
Motion to Amend ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Oppositions ,
Patent Trial and Appeal Board ,
Patents ,
Redskins ,
SCOTUS ,
Unified Patent Court ,
Unitary Patent
On June 5, 2015, a three-judge panel at the Patent Trial and Appeal Board (“PTAB”), granted a motion to amend in an inter partes review (“IPR”) proceeding, ruling that the patentee Neste Oil Oyj (“Neste”) could amend the...more
In a recent order, the Patent Trial and Appeals Board (PTAB) indicated that it will consider a motion for sanctions based on a claim of “abuse of process” in Inter Partes Review (IPR) proceedings filed by the Coalition for...more
Although an inter partes review (IPR) can be a powerful weapon to challenge a patent, it comes with a key limitation: a petition for IPR cannot be filed more than one year after the requester has been "served with a complaint...more