News & Analysis as of

Appeals Patents Administrative Proceedings

Foley Hoag LLP

PTAB Changes Procedure for Determining Discretionary Denials

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Key Takeaways: - The Director, in consultation with at least three APJs, will now decide the discretionary denial question, rather than having the merits panel decide the issue. - Discretionary denial will have separate...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - June 2021

Bio-Rad Laboratories, Inc. v. International Trade Commission, Appeal Nos. 2020-1475, -1605 (Fed. Cir. May 28, 2021)- In this week’s Case of the Week, the Federal Circuit considered an appeal from the International Trade...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - August 2020: Appeals Raise Constitutional Challenge to PTAB Fee and Compensation Structure

Appellants in New Vision Gaming & Development v. SC Gaming, Inc. f/k/a Bally Gaming, Inc. and Mobility Workx, LLC v. Unified Patents, LLC challenge the constitutionality of the administrative patent judge (APJ) incentive...more

Jones Day

Parties Seek To Preserve Arthrex Rights Despite Waiver Ruling

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Following on Judge Newman’s dissent in Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., parties are seeking to preserve their rights by challenging the Federal Circuit’s holding that a party’s failure to raise...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - November 2019: Improper Service and "Shapeshifting" Arguments Doom Time-Bar Challenge

In Game and Tech Co. (“GAT”) v. Wargaming Grp. Ltd, the Federal Circuit shed some light on what qualifies as “service” for purposes of triggering the time-bar of 35 U.S.C. § 315(b). The Court also clarified the role that the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - November 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Troutman Pepper Locke

Inter Partes Review of Pre-AIA Patents is Constitutional

Troutman Pepper Locke on

Celgene Corp. v. Peter, Appeal Nos. 2018-1167, -1168, -1169 (Fed. Cir. July 30, 2019) - Celgene owned two patents that pertained to methods of safely distributing potentially hazardous drugs.  The patents were challenged...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - June 2019: States Must Face IPR Challenges Similar to Tribes

In Regents of the Univ. of Minn. v. LSI Corporation, Fed. Cir., No. 18-01559, the Federal Circuit extended the inability to stand behind 11th Amendment Sovereign Immunity to patents owned by individual states, such that they...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - May 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - March 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Nestle USA, Inc. v. Steuben Foods, Inc., 884...

As strategies for managing multiple inter partes reviews (IPRs) of the same or related patents evolve, so does the complexity of collateral estoppel. Collateral estoppel prevents a party from having to re-litigate issues that...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Saint Regis Mohawk Tribe v. Mylan Pharm....

Mylan Pharmaceuticals, Inc., Teva Pharmaceuticals USA, Inc., and Akron, Inc. petitioned for inter partes review (IPR) of various patents owned by Allergan, Inc., which the Board instituted. One week before the scheduled IPR...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Wi-Fi One v. Broadcom, 878 F.3D 1364 (FED....

Broadcom sought inter partes review of three patents owned by Wi-Fi One. In response to Broadcom’s petitions, Wi-Fi One argued that the IPR was barred under 35 U.S.C. § 315(b) because Broadcom was in privity with certain...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - February 2019

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Hogan Lovells

China: New national-level Appeal Court – Cautious hopes for improved consistency and efficiency in high-tech IP / patent cases

Hogan Lovells on

On 26 October 2018, the Standing Committee of China’s National People’s Congress (NPC) issued a Decision setting out the establishment of a new IP Court of Appeals at the national level within the Supreme People’s Court...more

Knobbe Martens

Nantkwest v. Iancu

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Federal Circuit Summary - En Banc (excl. Chen), Opinion for the court filed by Stoll, joined by Newman, Lourie, Moore, O’Malley, Wallach, and Taranto. Appeal from the United States District Court for the Eastern District...more

Jones Day

Federal Circuit: “All the Expenses” Does Not Mean “Attorneys’ Fees”

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Last Friday, the Federal Circuit issued its en banc opinion in NantKwest, Inc. v. Iancu, No. 16-1794 (Fed. Cir. July 27, 2018). The Court held, by a 7-4 vote (Judge Chen, the former PTO Solicitor, was recused), that if the...more

Skadden, Arps, Slate, Meagher & Flom LLP

Federal Circuit Denies PTO Attorneys’ Fees

On July 27, 2018, the Federal Circuit ruled that a patent applicant’s obligation to pay the U.S. Patent and Trademark Office’s (PTO) “expenses” for district court proceedings to review patent application rejections does not...more

Knobbe Martens

The Federal Circuit Finds Tribal Sovereign Immunity does not Apply in IPR

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On July 20, 2018, the Federal Circuit held that tribal sovereign immunity is not available as a defense in IPR. Allergan Pharmaceuticals owned patents that it had asserted in litigation against various generic...more

Wilson Sonsini Goodrich & Rosati

Federal Circuit Holds That Tribal Sovereign Immunity Does Not Apply to Inter Partes Review

The U.S. Court of Appeals for the Federal Circuit has decided whether tribal sovereign immunity required termination of inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB). At the PTAB, Mylan...more

Knobbe Martens

Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc.

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Federal Circuit Summary - Before Dyk, Moore, and Reyna. Appeal from the Patent Trial and Appeal Board. Summary: Tribal sovereign immunity does not shield Indian Tribe owned patents from IPR. ...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Declares Tribal Sovereign Immunity Cannot Be Asserted In Inter Partes Review Proceedings

U.S. Court of Appeals for the Federal Circuit affirmed a U.S. Patent Trial and Appeal Board (PTAB) decision finding that tribal sovereign immunity does not apply to Inter Partes Review (IPR) proceedings. In so holding, the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2018

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Knobbe Martens

Standing to Appeal PTAB Decision to Federal Circuit is Measured for the Appellant, Not the Appellee

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The Federal Circuit determined that Article III standing was not necessary for an appellee to participate in a judicial appeal of an IPR final written decision because the appellant had Article III standing in Personal Audio,...more

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