Reexamination in IPR and PGR Practice – Patents: Post-Grant Podcast
Reissue vs. Reexamination in IPR and PGR Practice - Patents: Post-Grant Podcast
5 Key Takeaways | Petitions for Expungement or Reexamination of the Trademark Modernization Act
The Court of Appeals for the Federal Circuit has sparked debate following a recent ruling on the Patent Trial and Appeal Board's (PTAB) application of estoppel provisions in invalidating amended claims in inter partes...more
On July 26, 2024, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion reversing-in-part decisions from the U.S. Patent Trial and Appeal Board (“PTAB”) in two inter partes reexamination...more
Zyxel Comms. Corp. v. UNM Rainforest Innovations, Appeal Nos. 2022-2220, -2250 (Fed. Cir. July 22, 2024) Our Case of the Week provided new guidance on amendment proceedings under the Patent Trial and Appeal Board’s 2019...more
Please join Troutman Pepper's Intellectual Property and Health Sciences practice groups for our podcast series focused on strategies, trends, and other happenings in post-grant proceedings. In the final installment of this...more
Four subjects stood out in patent litigation in Texas in April 2023: (1) applicability of the customer-suit exception to the first-to-file rule; (2) the level of ties a reasonable royalty methodology must have to the facts of...more
SynQor, Inc. appealed the inter partes reexamination decision of the Patent Trial and Appeal Board (Board) holding un- patentable as obvious original claims 1–19, 28, and 31 of SynQor’s patent, U.S. Patent No. 7,072,190 as...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
After an inter partes review (“IPR”) is instituted, a patent owner may move to amend challenged claims to overcome the prior art. However, there are also alternative paths to amending claims over the prior art even after an...more
In an appeal from an inter partes re-examination of a patent having both original and newly presented claims, the US Court of Appeals for the Federal Circuit ruled that a decision in earlier inter partes reexaminations of...more
All eyes are on Arthrex this week, right? So of course we decided to take a look at a Board decision, and one that—so says the dissent—creates a circuit split. Below we provide our usual weekly statistics and our case of...more
For the Patent and Trail Appeal Board (“PTAB”), the PTAB allows a petition for inter parties review (“IPR”) to request cancellation of claims in a U.S. patent. For an inter parties review of a patent, the PTAB institutes...more
In its May 13, 2020 decision in VirnetX Inc. v. Cisco Systems, Inc., the Federal Circuit confirmed that Arthrex applies to not only IPRs, but also inter partes reexaminations, if not all proceedings before the PTAB,...more
On Tuesday, March 31, 2020, the United States Patent and Trademark Office (USPTO) issued Notices of Waiver of certain USPTO deadlines, including deadlines in inter partes review (IPR), post grant review (PGR), and covered...more
The Biologics Price Competition and Innovation Act of 2009 (BPCIA) was passed as part of health reform signed into law by President Obama in March 2010. This year, the BPCIA turns 10. While the U.S. Biosimilars Pathway has...more
It has been nearly 10 years since the U.S. Biosimilars Pathway (the Biologics Price Competition and Innovation Act) was enacted. The first biosimilar product in U.S. history was approved and launched in 2015. Ten biosimilars...more
Reexamination can be stayed pending IPR proceedings for good cause shown. The PTAB recently found good cause for a stay had been established when the reexamination proceedings and IPR proceedings had only a single claim in...more
PATENT CASE OF THE WEEK - Celgene Corporation v. Laura A. Peter, Appeal Nos. 2018-1167, -1168, -1169, -1171 (Fed. Cir. July 30, 2019) - In this week’s Case of the Week, the Federal Circuit held that the retroactive...more
In Apple v. IXI IP, the PTAB affirmed that the issuance of a reexamination certificate adding additional claims to a challenged patent does not reset the one-year time bar under § 315(b) to file a petition for inter partes...more
When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more
Natural Alternatives v. Iancu (No. 2017-1962, 10/1/18) (Prost, Moore, Reyna) - Prost, C.J. Affirming a PTAB inter partes reexamination decision rejecting patent claims as anticipated or obvious over the cited prior art,...more
Canada has historically been a much less active jurisdiction for patent litigation compared to the United States, which can be explained in part by the simple fact that the United States’ market is almost 10 times the size of...more
Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more
The Supreme Court is taking another patent case, granting certiorari in WesternGeco v. Ion. A divided panel of the Circuit had ruled that the plaintiff was not entitled to lost profits as a result of the sale of components of...more
This week the ITC stood firm in its position that final PTAB rulings of unpatentability in IPR proceedings are not grounds to modify, suspend, or rescind remedial orders. In Certain Foam Footwear, Inv. No. 337-TA-567, the ITC...more