The United States Patent and Trademark Office ("USPTO") is seeking public input about the need for a statutory experimental use exception in light of the common law jurisprudence. ...more
The Situation: Earlier this year, Florida became the first state to receive authorization for its Section 804 Importation Program ("SIP") from the U.S. Food and Drug Administration ("FDA"). This initial step toward the legal...more
5/29/2024
/ Abbreviated New Drug Application (ANDA) ,
Canada ,
Department of Health and Human Services (HHS) ,
Final Rules ,
Food and Drug Administration (FDA) ,
Healthcare ,
Imports ,
Intellectual Property Protection ,
Manufacturers ,
Pharmaceutical Industry ,
Pharmacist ,
Prescription Drugs ,
Supply Chain
On December 3, 2020, the Patent Trial and Appeal Board (“PTAB”) released data regarding the usage and success rates of its Motion to Amend (“MTA”) Pilot Program (“Pilot”). All PTAB cases instituted on or after March 15, 2019,...more
On October 21, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) provided a Notice of Proposed Rulemaking (“NPRM”) concerning their rules of practice in allocating...more
10/31/2019
/ America Invents Act ,
Burden of Persuasion ,
Comment Period ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Notice of Proposed Rulemaking (NOPR) ,
Post-Grant Review ,
Preponderance of the Evidence ,
Public Comment ,
Rules of Practice ,
USPTO
In a nonprecedential per curiam decision, the Federal Circuit vacated the PTAB’s final written decisions in five covered business method (“CBM”) reviews on four related e-trading patents as “arbitrary and capricious” because...more
The Situation: The USPTO took a long time to issue Supernus's patent application. Although Supernus would otherwise have been entitled to significant patent term adjustment, the USPTO ruled that the accumulated term should be...more
On October 23, 2018, the PTAB found unpatentable B/E Aerospace’s U.S. Design Patent No. D764,031 (“’031 patent”). C&D Zodiac, Inc. v. B/E Aerospace, Inc., PGR2017-00019, Paper 37 (PTAB Oct. 23, 2018). The ’031 patent...more
11/13/2018
/ America Invents Act ,
Design Patent ,
Final Written Decisions ,
On-Sale Bar ,
Patent Applications ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
Priority Patent Claims ,
Section 102 ,
Section 112 ,
Utility Patents
Patent Trial and Appeal Board (“PTAB”) hearings are typically open to the public, and a schedule of upcoming hearings is posted on the United States Patent and Trademark Office (“USPTO”) website. But hearings are only...more
On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”). During the conference, a panel of...more
8/2/2018
/ Corporate Counsel ,
Evidence ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Oral Argument ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Professional Conferences ,
Subject Matter Experts (SMEs) ,
USPTO ,
Young Lawyers
On June 5, 2018, Chief Judge David Ruschke and Vice Chief Judge Tim Fink of the Patent Trial and Appeals Board (PTAB) participated in a webinar providing new guidance on three topics: (1) the new claim construction standard...more
6/11/2018
/ Administrative Proceedings ,
America Invents Act ,
Claim Construction ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
USPTO
On April 18, 2018, the Director of the USPTO Andrei Iancu informed the U.S. Senate Judiciary Committee that he aims to propose changes to America Invents Act reviews by this summer 2018. The Director told the Committee that...more
5/1/2018
/ America Invents Act ,
Claim Limitations ,
MPEP ,
New Guidance ,
Patent Applications ,
Patent Examinations ,
Patent Reform ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
USPTO
In prior blog posts, we have commented on PTAB decisions terminating IPR proceedings due to the Petitioner’s failure to identify all real parties-in-interest. See blog posts on Sanction For Failing to Update Real Party In...more
3/6/2018
/ Adverse Judgments ,
Burden-Shifting ,
Discovery ,
Evidence ,
Federal Rules of Evidence ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Statutory Requirements
In prior blog postings, we have commented on PTAB decisions regarding the standards for demonstrating inherent obviousness. Practitioners should also be aware of a recent Federal Circuit decision clarifying the test is...more
On November 20, 2017, a district court denied a defendant’s Federal Rules of Civil Procedure (“Rule”) 12(b)(6) motion that sought to dismiss the case on the ground that the asserted patents were ineligible under 35 U.S.C. §...more
12/18/2017
/ Abstract Ideas ,
Claim Construction ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Federal Rule 12(b)(6) ,
Inter Partes Review (IPR) Proceeding ,
Motion to Dismiss ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101
The PTAB may, where good cause exists, extend a trial up to six months beyond the required twelve month length pursuant to 35 U.S.C. §316(a)(11). On October 5, 2017, the PTAB issued its first “good cause” extension of a trial...more