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Goodwin

Issue 40: PTAB Trial Tracker

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Precedential Opinion Addresses Conclusory Expert Declarations - In a precedential opinion in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (P.T.A.B. Aug. 24, 2022), the Board denied institution of an inter partes...more

McDermott Will & Emery

PTO Adds Green Energy Category to Patents for Humanity Program

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On March 6, 2023, the US Patent & Trademark Office (PTO) introduced a new green energy category to its Patents for Humanity Program. This new award category provides business incentives for patent applicants, holders and...more

Womble Bond Dickinson

Delaware Judge Enforces Patent Case Disclosure Requirements

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​​​​​​​The District of Delaware has recently instituted several requirements in patent cases, many in response to the overwhelming caseload in part due to a judicial vacancy. In addition to the specific patent standing orders...more

Smart & Biggar

Federal Court upholds Health Canada’s strict interpretation of patent listing deadline for KEYTRUDA formulation patent

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Update: Merck’s appeal was dismissed. The Federal Court recently dismissed Merck’s application for judicial review of Health Canada’s refusal to add Canadian Patent No. 2,830,806 (806 Patent) to the Patent Register, holding...more

McDonnell Boehnen Hulbert & Berghoff LLP

Time Periods in Toolgen Interferences Extended by Party Stipulation

The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) has issued a notice of extension of certain deadlines by party stipulation in the two interferences involving ToolGen Inc. as Senior Party (No. 106,126...more

Foley & Lardner LLP

USPTO Offers Relief for COVID-Related Delays in Submitting Priority Documents

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One year into the COVID-19 pandemic, and its affects still are impacting patent prosecution, especially as it relates to the difficulty of obtaining paper copies of official documents. While the USPTO rarely requires...more

American Conference Institute (ACI)

[Virtual Event] Paragraph IV on Virtual Trial - COVID-19 Edition - August 20th, 8:45 am - 6:00 pm EDT

Join us for a one-day virtual event for Counsel for Hatch-Waxman Litigators. While COVID-19 prevented us from meeting in person this April in NYC, we are pleased to announce a special one-day virtual event Paragraph IV on...more

American Conference Institute (ACI)

[Webinar] Examining the COVID-19 Effect on the Business and Practice of Hatch-Waxman Litigation - June 2nd, 12:00 pm - 1:00 pm EST

The coronavirus global pandemic has ushered in extraordinary roadblocks for the pharmaceutical industry. To help you carve out a path forward, in-house senior executives and industry leaders will convene virtually at ACI’s...more

Spilman Thomas & Battle, PLLC

U.S. PTO COVID-19 Update: Patent Office Extensions Through May 31, 2020

The Director of the U.S. Patent and Trademark Office on April 28, 2020 signed a Notice of Extended Waiver for certain deadlines associated with patent-related filings, if the missed deadline resulted from situations relating...more

Dechert LLP

Expect Already-Instituted IPRs & PGRs to Move Forward in a Time of COVID-19-Related Delays

Dechert LLP on

Key Takeaways - On March 31, 2020, PTO Director Andrei Iancu ordered the PTAB to grant any requests for extensions for pre-institution briefing schedules for any COVID-19-related delays. - Significantly, the March 31...more

Akin Gump Strauss Hauer & Feld LLP

Patent Owner Precluded from Asserting in Litigation Claims Obtained Through Ex Parte Reexamination

A district court has denied a request to amend patent infringement contentions to add claims obtained through ex parte reexamination after the case had been substantially narrowed through a parallel inter partes review (IPR)...more

Smart & Biggar

Rx IP Update - February 2019

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Orders of prohibition relating to polymorphic form patent for PRISTIQ upheld on appeal - As previously reported, the Federal Court, in a pair of decisions, granted orders prohibiting Apotex and Teva from marketing their...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Denies Motion to Excuse Late Filing of Exhibits to IPR Petition

The Patent Trial and Appeal Board (PTAB) has denied a petitioner’s motion to excuse the late filing of the exhibits to its petition for inter partes review (IPR). The PTAB found that the petitioner had failed to show good...more

Robinson & Cole LLP

IP+T: Intelligence Newsletter - December 2017

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If you own trademark registrations in the United States, you are required to make certain filings with the U.S. Patent and Trademark Office (PTO) to keep your trademark registration(s) alive. In particular, prior to the sixth...more

Knobbe Martens

USPTO Director Grants Extension for Missed IPR Appeal to Federal Circuit

Knobbe Martens on

The USPTO Director granted a request to extend a missed deadline for an appeal of an IPR decision to the Federal Circuit due to the patent owner’s excusable neglect in Mitsubishi Cable Industr., Ltd. v. Goto Denshi Co., Ltd.,...more

Foley & Lardner LLP

District Court Dismisses USPTO December 2015 Holidays Case

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On December 2, 2016, Judge O’Grady of the U.S. District Court for the Eastern District of Virginia granted the USPTO’s motion to dismiss the complaint brought by Elm 3DS Innovations, LLC over the “holidays” declared December...more

Foley & Lardner LLP

Timing Is Everything: Successful Joinder Motions At The PTAB

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The joinder provisions of inter partes review (IPR) proceedings can be a great tool to circumvent the 1-year IPR filing deadline following service of a complaint for infringement. However, grant of a joinder petition by the...more

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