News & Analysis as of

Intellectual Property Protection Article III Patent Trial and Appeal Board

Jones Day

PTAB Retains Jurisdiction Of Expired Patents

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The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that...more

Knobbe Martens

Federal Circuit Review - November 2023

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Federal Circuit Orders District Court to Consider Extrinsic Evidence in Claim Construction - In Actelion Pharmaceuticals Ltd. v. Mylan Pharmaceuticals Inc., Appeal No. 22-1889, the Federal Circuit held that where a...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Intel Corp. v. Qualcomm Inc., 21 F.4th 801 (Fed....

Intel filed three IPR petitions against Qualcomm’s ’949 patent, which is directed to “boot code” in a multi-processor system. Apple, who was not a party to any of the IPRs, uses Intel’s baseband processors in certain iPhone...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Jones Day

Expired Patents Can Be Challenged

Jones Day on

Although it may seem counterintuitive, the PTAB has jurisdiction over expired patents, and patent owners may need to defend their expired patents in inter partes review. The PTAB recently reiterated this in Apple, Inc. v....more

Morgan Lewis

USPTO Codifies Burden of Persuasion Rules for AIA Amendments at the PTAB

Morgan Lewis on

It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more

Troutman Pepper Locke

The Federal Circuit Finds Article III Standing

Troutman Pepper Locke on

Grit Energy Solutions, LLC v. Oren Technologies, LLC, Appeal No. 2019-1063 (Fed. Cir.. April 30, 2020). Grit Energy filed a petition for inter partes review against Oren’s U.S. Patent No. 8,585,341 pertaining to systems of...more

Mintz - Intellectual Property Viewpoints

Congress Considers Creation of a “Copyright Claims Board” as an Alternative to Handle Small Copyright Claims

On Tuesday, October 22, 2019, the US House of Representative approved, by 410-to-6, the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2019, introduced under H.R.2426 by Representative Hakeem Jeffries (D-NY)....more

Polsinelli

One-Year Time Bar Triggered After the Service of a Complaint, Regardless of Whether the Serving Party Lacked Standing to Sue

Polsinelli on

On August 23, 2019, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) issued a precedential opinion relating to the one-year time bar under 35 U.S.C. § 315(b). ...more

McDermott Will & Emery

Algorithm Required Where Corresponding Structure to Means-Plus-Function Term Is Computer-Implemented

The US Court of Appeals vacated a Patent Trial and Appeal Board (PTAB) obviousness decision, finding that the disputed means-plus-function term was computer-implemented and therefore required the corresponding structure to...more

Hogan Lovells

U.S. + Germany Patent Update – July 2019

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Hogan Lovells’ U.S. + German Patent Update reports on recent patent news and cases from Germany and the United States. United States - - U.S. Congress Introduces Bill Addressing Patent Subject Matter Eligibility -...more

Mintz - Intellectual Property Viewpoints

Supreme Court Declines to Address the Question of Article III Standing to Appeal a Final Written Decision from the PTAB

This week, the Supreme Court left open the question of Article III standing with regards to appealing a final written decision from the Patent Trial and Appeals Board (“PTAB”) that is favorable to the patent owner. On...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2019 #3

PATENT CASE OF THE WEEK - AVX Corporation v. Presidio Components, Inc., Appeal No. 2018-1106 (Fed. Cir. May 13, 2019) - Following an inter partes review upholding the patentability of certain challenged claims, the...more

Jones Day

IPR Appeal Dismissed After Biosimilar Development Discontinued

Jones Day on

Article III of the Constitution imposes a “case or controversy” limitation on the jurisdiction of federal courts: an actual case or controversy must exist between the parties at all stages of the federal court proceedings,...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Decision Clarifies When an ANDA Filer May Appeal an Adverse IPR Ruling

In Amerigen Pharmaceuticals Limited v. UCB Pharma GmbH, generic drug manufacturer Amerigen appealed a decision of the Patent Trial & Appeal Board finding UCB’s patent to certain chemical derivatives of diphenylpropylamines...more

Jones Day

Injury in Fact Required to Bring Appeal from PTAB Decision

Jones Day on

On August 3, 2018, the U.S. Court of Appeals for the Federal Circuit dismissed an appeal from the USPTO Patent Trial and Appeal Board (PTAB) in JTEKT Corporation v. GKN Automotive Ltd. on the basis that the appellant lacked...more

Dorsey & Whitney LLP

Patent Day at the Supreme Court

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Today the Supreme Court re-affirmed the validity of the Inter Partes Review (IPR) process in Oil States Energy LLC v. Greene’s Energy Group, LLC, but also made IPRs a somewhat more stringent process in its decision today in...more

Patterson Belknap Webb & Tyler LLP

Win or Go Home? Standing to Appeal PTAB Decisions Upholding Patentability to the Federal Circuit Before Submitting a Biosimilar...

Biosimilar developers have been aggressive in filing petitions for inter partes reviews (IPRs) of biologics patents before the Patent Trial and Appeal Board (PTAB), many of them preceding the filing of a marketing...more

Robins Kaplan LLP

Centuries of Precedent are Little Help as IPR Constitutionality Divides Justices

Robins Kaplan LLP on

This morning the Supreme Court heard arguments in the heavily anticipated case of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC on the question of whether AIA trials at the patent office, such as inter partes...more

Womble Bond Dickinson

State Universities Gain Immunity from IPRs

Womble Bond Dickinson on

State Universities Gain Immunity from IPRs - Today, many universities own extensive patent portfolios that are managed by sophisticated tech transfer offices. Universities obtain these patents for many reasons, not the...more

Fenwick & West LLP

Intellectual Property Bulletin - Winter 2017

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A Smooth Patch in a Rough Road? Governmental Transition and Intellectual Property - Whenever a new Congress convenes, some IP issues come to the fore while others take a back seat. Transition to a new administration in the...more

Proskauer - New England IP Blog

The Federal Circuit’s Standing Requirement to Appeal Patent Office Decisions

In a recent landmark decision, the Court of Appeals for the Federal Circuit announced that not all inter partes review (“IPR”) proceedings at the U.S. Patent Office can be appealed. While anyone can file an IPR petition, not...more

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