News & Analysis as of

Certiorari America Invents Act

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

McDermott Will & Emery

Supreme Court to Consider Time Bar to AIA Challenge

The Supreme Court of the United States, brushing aside the position taken by the US Patent and Trademark Office as to the suitability of this case as a vehicle for review, agreed to consider whether a petition for an America...more

Faegre Drinker Biddle & Reath LLP

Supreme Court Decides Return Mail, Inc. v. Postal Service

On June 10, 2019, the Supreme Court of the United States decided Return Mail, Inc. v. Postal Service, No. 17-1594, holding that the United States Postal Service is not “a person” able to seek post-issuance review of...more

McDonnell Boehnen Hulbert & Berghoff LLP

Return Mail, Inc. v. United States Postal Service (2019)

In a 6-3 decision, the Supreme Court today held that federal government agencies cannot avail themselves of America Invents Act (AIA) post-grant proceedings.  This decision was based on the Court's determination that the...more

McDonnell Boehnen Hulbert & Berghoff LLP

U.S. Supreme Court Issues Ruling in Return Mail v. U.S. Postal Service Prohibiting Federal Agencies from Seeking AIA Review

In a 6-3 decision rendered earlier on June 10, 2019, the Supreme Court decided that federal agencies are not “persons” who can petition for post-issuance review of patents under the America Invents Act (AIA).  Thus, the...more

Dorsey & Whitney LLP

The Supreme Court - June 10, 2019

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The Supreme Court of the United States issued three decisions this morning:   Return Mail, Inc. v. Postal Service, No. 17-1594: The Patent Trial and Appeal Board was created by Congress in the Leahy-Smith America Invents...more

Nutter McClennen & Fish LLP

5 Patent Law Petitions to Watch at the Supreme Court

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and...more

Dorsey & Whitney LLP

The Supreme Court - January 22, 2019

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The Supreme Court of the United States issued the following decision this morning: Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229: Every patent statute over the past two centuries has included an...more

Snell & Wilmer

Supreme Court to Decide Multiple IP Issues This Term

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On October 26, 2018, the Supreme Court of the United States (“SCOTUS”) granted certiorari in two IP cases. In Mission Product Holdings, Inc. v. Tempnology, LLC, SCOTUS will address a circuit split on the effect bankruptcy...more

Fish & Richardson

Supreme Court Grants Return Mail’s Petition for Certiorari in Return Mail, Inc. v. United States Postal Serv.

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Supreme Court Docket No. 17-1594 - Appeal of Return Mail, Inc. v. United States Postal Serv., 868 F.3d 1350 (Fed. Cir. Aug. 28, 2017) - The Supreme Court has granted, in part, Return Mail’s Petition for Writ of Certiorari...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court to Decide if Government Can Bring AIA Proceedings

On Friday, October 26, 2018, the Supreme Court granted certiorari in Return Mail, Inc. v. U.S. Postal Service, in order to answer the question whether the government can bring post-grant review proceedings under the...more

Dorsey & Whitney LLP

The Supreme Court - October 29, 2018

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On Friday afternoon, October 26, 2018, the Supreme Court of the United States granted certiorari in three cases: Return Mail, Inc. v. USPS, No. 17-1594: Whether the government is a “person” who may petition to institute...more

McDermott Will & Emery

Supreme Court to Consider Whether Confidential Sale Triggers On-Sale Bar

The US Supreme Court granted certiorari to consider the question of whether, under the America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as...more

Jones Day

High Court to Hear Helsinn v. Teva, Resolve AIA Secret Sales Question

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On June 25, 2018, the United States Supreme Court agreed to review the Federal Circuit's decision in Helsinn Healthcare v. Teva Pharmaceuticals, No. 17-1229. In Helsinn, the Federal Circuit considered whether the America...more

Kilpatrick

Supreme Court to Review AIA On-Sale Bar

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Yesterday, the U.S. Supreme Court accepted Helsinn Healthcare S.A.’s certiorari petition to consider whether, under the America Invents Act (AIA), an inventor’s sale of an invention to a third party that is obligated to keep...more

Dorsey & Whitney LLP

The Supreme Court - June 25, 2018

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The Supreme Court of the United States issued two decisions today: Ohio v. American Express Co., No 16-1454: American Express (Amex), like all credit-card companies, operates a transaction network that serves two groups:...more

Dorsey & Whitney LLP

The Supreme Court - April 24, 2018

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The Supreme Court of the United States issued three decisions today: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712: The Leahy-Smith America Invents Act, 35 U.S.C. §100 et seq., went into effect...more

Jones Day

Court Grants Rehearing In Light Of Wi-Fi One

Jones Day on

Eleven days after the Federal Circuit’s en banc opinion in Wi-Fi Onc, LLC v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), a three-judge panel granted a petition by patent owner Click-to-Call...more

Dickinson Wright

Will Inter Partes Reviews Be Abolished By The Supreme Court?

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On November 27, 2017, the Supreme Court heard oral arguments in a case that could undermine a key provision in the America Invents Act. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (Oils States). The issue...more

McDonnell Boehnen Hulbert & Berghoff LLP

Is a Patent a Private or Public Right? -- Supreme Court Hears Oral Arguments in Oil States Energy Services, LLC. v. Greene's...

Leading up to the Supreme Court oral argument for Oil States Energy Services, LLC. v. Greene's Energy Group, LLC on November 27, 2017, there was a lot of discussion regarding whether patents were a private or public right. ...more

McDonnell Boehnen Hulbert & Berghoff LLP

Oil States Energy Services, LLC v. Greene's Energy Group, LLC -- Positions Taken in Selected Amicus Curiae Briefs

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

McDonnell Boehnen Hulbert & Berghoff LLP

SCOTUS: Supreme Court Takes Up Constitutionality of AIA Reviews

On June 12, 2017, in Oil States Energy Services v. Greene’s Energy Grp., LLC, Case No. 16-712, the Supreme Court accepted certiorari on the question of whether the IPR regime set out by Congress in the AIA is constitutional....more

McDermott Will & Emery

Supreme Court to Review Whether PTAB Must Address All Issues Raised in IPR Petition

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Echoing Judge Newman’s dissent in the US Court of Appeals for the Federal Circuit’s decision in SAS Institute, Inc. v. ComplementSoft, LLC, Case Nos. 15-1346; -1347 (Fed. Cir., Nov. 7, 2016) (per curiam) (Newman, J,...more

Snell & Wilmer

Supreme Court to Consider Constitutionality of AIA Inter Partes Review Proceedings

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The Supreme Court has granted a writ of certiorari challenging the constitutionality of inter partes review proceedings conducted by the United States Patent and Trademark Office under the America Invents Act. The Court’s...more

Knobbe Martens

Supreme Court Will Decide Whether IPRs Are Unconstitutional

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The Supreme Court granted a petition for writ of certiorari to address whether inter partes review – an adversarial process used by the Patent Office to determine the validity of existing patents – is unconstitutional in Oil...more

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